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A Supplemental Note on the Medical Practitioner's Act
Bijel Dholakia sent in these questions via the PIUG Web Site Comments and Questions form:1.What are some good patent search tips / techniques when searching for surgical processes or methods?
2.Are there any good training seminars / courses on how to search medical patents that you recommend? Who runs them?
Edward T. Mickelson, Ph.D., Patent Agent, replied stating in part "bearing in mind that such processes and methods are not patentable in Europe and are essentially meaningless in the US, as physicians are immune from infringement suits regarding surgical/medical processes and methods."
Ed was referring to the Medical Practitioner's Act codified at 35 USC 287(c)(4) (See the AIPA enacted in 1999). However, there are a LOT of twists to that statute. Medical practitioners licensed by a State or Territory of the U.S. are immune from liability of a patented method, as is their "related health care entity" such as the hospital in which they practice the patented method if they have a professional affiliation with the hospital.
However, amongst other things, that immunity from liability from patent infringement DOES NOT apply (1) to PATENTS issued from an application having an "effective filing date" prior to September 30, 1996 and (2) to ENTITIES engaged in "commercial development, manufacture, sale, importation,..." etc. where such ACTIVITIES are "directly related to commercial development, manufacture, sale, importation..." etc that are "regulated [by a variety of U.S. government agencies like the FDA].
What does this mean? Generally speaking, it means that old U.S. medical method patents are enforceable against physicians, and that all U.S. medical method patents are enforceable against manufacturers or regulated products. Generally, because there may be exceptions to the exceptions. Read 35 USC 287 in detail, and perhaps Gerry Mossinghoff's article in the JPTOS on the subject. My understanding is that Gerry was central to the drafting of this provision.
Much as I want to sell my idea for $ 1 million, I just don’t know how to go about it?
You often hear someone bragged that they have this fantastic idea and they want to sell it for one million bucks! Or perhaps even you yourself have thought of it before. And why not, who would not want to be rich, right. But boasting it is of no use. First of all, having an idea that can be sold is not an easy thing. For one thing, it has to be documented, and preferably even filed as a patent. For another thing, disclosing it could give away the idea and kissing it goodbye. But in actuality, many ideas have been stolen from their rightful owner just because the owner did not know how to go about it. There is a proper and safe way to thread, but most people don’t know about it. It is like when you need to pass motion, then only you go and search for the loo! Or worse, just brag about it and tell the idea to all and sundry, and hope that someone will guide them to that pot of gold. Let us assume that you have indeed a good idea, an idea that can be commercially exploited for monetary gains. So how does one go about it?There is this thing called intellectual property and there are proper procedures to get that idea of yours properly documented with the patent office. You can get your ideas written out as a document and filed as a patent or if it is a logo or a brand, you can get it registered as a trademark. If you have a book written, or a music score, you can get it properly copyrighted. Works of the mind are automatically deemed copyrighted once it is published, but you should have a proper record of it so that somebody else can’t steal your property. However, going the way of filing for your intellectual property is a long and costly process. Most people would feel uncomfortable to go this way, and if there is an easier way, they would certainly want to hear about it. There is of course an easier way, but if could reduce the value of that asset. Just what is the alternative to filing patents then?
One of the more practical ways is to sell that idea of yours to a company, assuming that you already got a patent grant on it. Here, you can sell the idea outright, or license the idea to a third party for manufacture and sale. Of course you will have to do some research first to identify who would likely need your idea. It all sounds easy right? Unfortunately, it is not, and it is more like looking for the needle in a haystack! For one thing, companies normally will not entertain unsolicited ideas. Just imagine, there are so many departments in a company, so which department door to knock at? There is normally no such a department as ‘ideas department’! If you go to the sales department, you will be disappointed because the sales people will not help you out. They will not want more products to sell! And if you go to the technical department and tell them your idea, they would have too big an ego to accept your outside idea, or worse off, they might just steal your idea and tell their boss that ‘they’ have come out with the idea! So, selling your idea to another company is an uphill task. If your idea is not properly documented, or waiting for grant of patent, the task of selling it off is even more difficult. Well, what then?
Luckily, there is another alternative. You can sell your idea, whether patented or not, through a patent broker or an intellectual property brokerage firm. These companies specialize in seeking buyers for your ideas. They act like middle man, and some of them have become so specialized that if you only give them a raw idea, they can use their professional expertise to size up the idea and sugar coat it so that it appeals to a buyer. They also act professionally to get the best price for you. However, not all brokers can offer you these kinds of services. They have to be technically competent, as well as idea creators themselves, and inventors of some kind. It is often the case that whatever the idea that you are touting; there is always an element of incompleteness somewhere. In order to sell an idea, you would need to know who your competitors out there are. To do a proper job, these professional brokers will need to do a proper research in terms of technicality, and prices. And who else have such qualifications? Yes, it is the patent agents! They know the implication of the ideas as they have been drafting patents all along. They also know who the competitors are out there because they have to research other people’s patents when they do patent drafting. However it is only recently that such professionals have come to the fore and hopefully, they will bring about a renaissance to the field of patent brokering. And if you are wondering whether that half-an-idea of yours can be sold, the answer is ‘YES’. How about half a million? It is better than just dreaming!
Electronic Notebooks and the Requirements to Prove Date of Invention in Patent Interferences
Electronic Notebooks and the Requirements to Prove Date of Invention in Patent Interferences This paper contains an excerpt of an email I sent to the PIUG (Patent Information User's Group) email distribution list on November 30, 2003. 1.It would be useful to all of you to have a better understanding of the requirements relating to proof of date of invention in patent interferences in order to understand the issues relating to electronic notebooks.First, keep in mind that a date of actual invention is now only relevant in the United States and the Philippines. In all other major jurisdictions, it is the date of filing of a patent application that is the earliest date allowed to as a date of invention, except where there are issues of theft of invention.
2.There are some substantive legal issues that you should all be aware of relating to evidence of inventions for the purposes of proving priority of invention (first to invent) for U.S. patents. The law respecting how to prove priority of invention is in fact a well defined body of law. Its application to electronic record keeping merely requires an application of that law to e-records. No more, no less. Thus, it is the legal principles that are paramount, not the technology, per se, of record keeping.
3.The rule requiring corroboration: Evidence of what was invented and when that invention came into existence is generally NOT admissible in the United States Patent and Trademark Office and U.S. courts for the purpose of invalidating claims to the same invention made by another UNLESS it is corroborated by someone other than the inventor. Here, "inventor" means the person or persons who are named on the patent. (I use the word "patent" here to mean either patent or patent application, for simplicity.) Corroboration therefore requires a non-inventor to have reviewed and understood the inventors' work. It is the date of that corroborator's review that defines provable evidence a date of invention. Thus, a co-worker, technician, manager, or even a secretary can corroborate. Of course, it is less likely that a non-technically trained person will understand what they were asked to corroborate, and therefore, it would be harder to prove a right to a date of invention based upon a non technical person's knowledge.
4.Chain of Custody: Evidence in legal proceedings in the U.S. is only admissible if it meets the admissibility requirements of the Federal Rules of Evidence (FREs). The FREs require that documents and things relied upon as evidence may be challenged for lack of a "chain of custody", i.e., proof that they were in the possession and control of a person or entity that would not tamper with them.
5.In all evidentiary proceedings, most documents and things held out as evidence do not "speak for themselves"; they must be brought into evidence by testimony of a person explaining what they are and where they came from. Exceptions to this rule are self authenticating records, such as patents, publications, certain notarized documents, and the like.
6.Generally speaking, a document management system should incorporate technology and security that facilitates meeting the evidentiary requirements noted above.
A Guide to Think an Idea for Patent
This is the article give the ways to think for new ideas for getting Patent. This article describes the better ways for creative thinking and explains the techniques to think for a new idea can be patented.We all, everybody has their own brain to think but few people only discover some new inventions and creative ideas. Why all people cannot find some inventions and patent ideas? What is the reason behind this? So many graduates and engineers are there in this world. But few of them are only be scientists. Why can't all engineers and graduates become scientists/inventors? Because all engineers and graduates have brain and thinking capacity, but they don't know how to thinking creatively and they may not know to use their mind for creative thinking.
I can show a simple example here. No one would look at a person such as ‘Arnold Schwarzenegger' and think how lucky he is to have been born with such tremendous muscles. Everyone knows that he, and people like him, have worked many thousands of hours to build up their bodies so they can compete and win in body building competitions. Your creative capabilities are just the same. They actually grow if they are used.
But we don't need to spend thousands of hours to increase our creative-thinking abilities. By practicing, we can start our creative juices flowing, and we may even amaze our self at the quality and quantity of good ideas that we come up. Every graduate and engineers can become a patent inventor, if they use their mind for creative thinking. For that I give some ways to penetrate our brain and make some useful patent ideas.
We don't have to be a great scientist or a first grade student to discover the ideas for patent. All we have to do is develop the ability to improve our situation, wherever we are and whatever we are doing. Most people dismiss their own ideas because they think that those ideas cannot be very valuable if they were the ones who thought of them. Everyone can own a patent, if they improve their mind and thinking capacity with this following ways.
1.Preparation – It is the first step for thinking Patent ideas. It means to prepare about any of the thought or technology. Preparation of previous patents in the particular thought or technology also important to get the ideas or improve our thinking capacity. Preparation seems to be the most important, and it involves gathering the right data and asking the right questions to our mind.
2.Realization – It is the step to force the mind to realize about the particular technology and get some new invents. Whenever we will try to realize about any of the previous patent or existing technology, so many new ideas comes into mind. At that time we need to write all our ideas and don't bother about that idea already exist or not.
3.Application – It is the final step to workout that creative idea and turns it into something worthwhile. If that idea brought from an existing patent, try to compare that idea with the existing patent claims.
We can begin building our creative thinking with focused questions. Some that you might think of are the following:
1.What are we trying to do?
2.How are we trying to do it?
3.What are our assumptions?
4.What if our assumptions are wrong?
5.How can we continue?
6.How can we make perfect assumptions?
7.How can we make assumptions into real designs?
All improvements and inventing ideas begin with questioning the current, existing circumstances. If we are not making progress for any reason, stop and think, and begin asking yourself the hard questions that will stimulate our mind to consider other possibilities.
The next important think is the goal. For an every individual the carrier and personal goal is very important to go forward. Like that for creative thinking to get an idea for patent also, a clear goal is very much important. So we have to set our goal like start thinking for the new patent in which area? Which technology? Etc.
For getting patent ideas, we need to crate problems in the existing one. For that we need to analyze the patent in their limitation view. Pressing problem of the one invention is the generator of new creative inventions.
Surely all of us are genius, and we were born with the potential for exceptional creativity. But creative abilities are latent. They are like muscles that grow with use. We can increase our creative powers to get patent by using them, over and over, in every situation. And we can if we think; we can get our own Patent.
The Different Types of Patent Claims
There are many different types of claims of a patent application. Some patent claims are about the type of invention. There are apparatus claims, method or process claims, claims to designs, chemical composition, etc. There are also claims which are related to the scope of a patent. Generally speaking, broad patent claims are more valuable and marketable than narrow claims. Broad patent claims are similar to a fishing net. The bigger the net, the more fish on your plate. In patent terms, a broad claim will give you a larger monopoly and potentially more opportunities for licensing. Narrow claims are claims with less scope.These claims are more difficult to infringe, and are typically less valuable. The narrowest claims are called “picture claims” which typically list many different components and are usually the most likely to pass muster with the USPTO. There are also independent claims and dependent claims. You can think of independent claims and the dependent claims as being one really long, and grammatically incorrect sentence, which your high school English teacher would be quick to fail in a book report. In other words, you can pretend that there is no period between the independent claim and the dependent claim because the dependent claim is conflated in scope with the independent claim. It should be noted that if the independent claim is infringed, you do not need to worry about the dependent claims. However, if there is no infringement on the independent claim, but there is infringement on the dependent claim, there is still infringement.
Tips for preparing a great patent resume
While general rules for preparing a resume also apply to those in the IP field, there are some basic additions that can help you create a great patent resume.Mention the USPTO….
…and other international patent offices. Are you registered? What kind of interactions have you had directly with the USPTO or other foreign patent offices? Be specific about frequency and type of interaction. Instead of “coordinated with the CIPO on international search reports,” say “spoke weekly with managers at the Canadian Intellectual Property Office (CIPO) regarding international search reports (ISRs).”
Don’t assume the resume reviewer knows Intellectual Property (IP) lingo….
The HR Director is a human resources specialist, not an engineer! Avoid using very specific jargon in your field without an explanation. Make sure to write out the long version of the abbreviation the first time it is written in the resume. Instead of “EE,” use “Electrical Engineering (EE).” That abbreviation in the parenthesis indicates to your reader that you will use the designation “EE” for the rest of your resume.
Be specific…
..as often as you can.
Instead of “performed patent research and analysis in a wide variety of fields,” write “performed patent research and analysis for mechanical (electromechanical, surgical instruments, engine design technology) and electrical (integrated circuits, telecommunications) fields.”
Instead of using a header that says “Experienced Patent Agent” write “Registered Mechanical Patent Agent for 12 years.” Registered, 12 and Mechanical are important keywords and allow the HR Director to classify your CV more easily.
Weight your content…
…just like a newspaper article. The first few lines are the most crucial for keywords and ideas. Bolded headers should be weighted strongly as well. Put your biggest accomplishments and strongest skills into the headers and initial bullet listings.
People tend to skim resumes instead of read them word-for-word. During an initial review, the HR Director may only consider the headers and first few lines before deciding which resumes to allow into the second round.
Instead of putting a summary at the top, include a short list of accomplishments. Summaries tend to use generic, unspecified language while a short, bulleted list of accomplishments gets specific right away. You can list accomplishments out of chronological order at the top and then re-insert them in the appropriate places throughout the rest of the resume.
Pay attention to the basics..
…of writing, layout and design. One of the biggest mistakes in IP resumes is assuming writing doesn’t matter as much as technical experience. That’s not true! Excellent non-technical writing and grammar are important because it they will give you a leg up on your competition.
Bolding, bulleted lists and proper spacing all invite the reader to spend more time on the document and can even give the reviewer a feel for your personality. A tightly organized resume indicates that you are a tightly organized person. A clear, readable resume with no spelling mistakes tells the reviewer you are easy to understand and pay attention to detail. Avoid long paragraphs and full sentences…they aren’t easy to organize or read. Bullet your lists. Use liberal spacing between chunks of information.
Calculating Damages Payments and Accounts of Profits in Patent C
Claimants who have successfully proved liability in an action for patent infringement, either actual or anticipated, are entitled to elect their remedy. Successful litigants will discover that the measure of the award for compensation may vary widely depending upon their election between damages and an account of profits.Comparison of the Remedies
The variance between an account of profits and damages exists because the focus is on the affairs of different parties: in one instance that of the claimant and the other on the defendant.
Damages
An award of damages focuses on the losses sustained by the claimant. There is no upper limit on the measure of damages that may be awarded. Relief for patent infringement may overlap with other areas of intellectual property; for instance the copyright of the claimant may have also been infringed (an instance being software). In calculating the sum to be paid in damages, a court will disregard whether the defendant could have avoided infringement by using substitute process and thus avoided a charge of infringement altogether. It is irrelevant. Losses not caused by the infringement are not recoverable.
An Account of Profits
On the other hand an account of profits focuses on the profits made by the defendant, without reference to the damage suffered by the claimant at the hands of the defendant. The purpose of the account is to prevent the unjust enrichment of the defendant by the use of the claimant's invention. The claimant is treated as if they were conducting the business of the defendant, and made the profits of the defendant. As such, the upper most limit of an award is the sum of profits made by the defendant caused by the infringement. In most cases, an award of damages will equal or exceed the maximum award in an account of profits; however an account of profits may greatly outstrip an award of damages in the right case. When assessing an award, to say that a defendant should have generated higher profits is immaterial: the claimant must take the defendant as he finds them.
The profits must have been earned from the use of the claimant's invention, and if the infringed invention formed only part of the overall product or process, then only that part of the profit attributable to the patented invention is recoverable. This is where most difficulty is experienced in assessing the profits earned by the defendant and a number of approaches may be taken during the assessment. Courts take the view that this would be unfair upon the defendant for the claim to be awarded all of the profits where attribution of profits is possible. Manufacturing processes that use the patent in question as a small step in the manufacturing process provide a typical example, in that it clearly cannot be said that the entire profit of the application of the process is attributable to the infringement. Where it is appropriate to apportion losses, the reference for the assessment will involve splitting the profits between infringing and non-infringing parts of the process.
On the other hand, there are instances where it is appropriate for the claimant to recover all of the profits of an invention, however whether this is so turns on the facts of the case.
Making the Calculations Damages
It is trite to say that the claimant is entitled to be placed in the position they would have been had the infringement not taken place in the context of damages. The test for the measure of damages in patent cases is seen in the application of the ‘but for' test, and the damage must be the natural and direct consequence of the defendant's acts. Although the claimant must prove their loss, they are assessed liberally. Courts recognise that monopoly rights lead to higher prices or license fees, so this is the peg to which damages are assessed.
A court is generally prepared to imply that inference with the claimant's monopoly will cause damage in the ordinary course of events, and the absence of a precise means to calculate damages will not necessarily result in an award of nominal damages, but a fair sum of what a reasonable person may expect to have lost, with reference to the general trade that has been interfered with by the defendant.
There are two ways to calculate the damages suffered by a defendant, and the method turns on whether the claimant manufactures the patented invention or whether manufacturing of the invention is licensed to others.
The Reasonable Royalty
Where the patent owner licenses the production or use of the invention to others, the measure of damages is the lost royalty profits.
A court is usually inclined to award a reasonable royalty to the claimant, notionally asking: if the claimant did grant a licence to use the patent, what would they reasonably be expected to obtain in the market?
The damages are limited to the lost license fees that would have been payable by the defendant. Where previous licensing fees have been agreed, the determination of the price as it has been determined in the free market will be persuasive evidence of the proper sum payable, as that is the sum that the infringer will be presumed to be asked to pay. The sum may be increased where standard license fees impose restrictions upon the licensee which are not similar to the conduct of the defendant when committing the infringing acts. Thus when a product is usually made available on a usage only basis, and the infringer has manufactured and sold the product with purported licenses to further develop the invention to its licensees, an uplift in the award payable is likely.
Where there is no precedent of licensing by the claimant, calculation of a reasonable royalty may take into account:
1. the patent owners' previous conduct in pricing and terms
2. Percentages standard in the trade
3. cost of designing around the patent monopoly rights
The proper sum for the notional license fee is the sum that a potential licensee would be willing to pay to enter the market.
Where there is no licensing activity, the court may use this notional license fee to calculate damages. Evidence of the quantum to be awarded may be a quoted license fee by the claimant. Where there is no quote for a reference point, the measure will be the rate that a licensee who is not in the market would pay, regardless of whether they might have been able to make non-infringing equivalents.
Manufacturers of Patented Inventions
When the patent owner manufactures the product, the patentee is entitled to lost manufacturing profits.
When the patent owner is a manufacturer rather than a licensor, it has often been said that the appropriate figure cannot be arrived at with mathematical precision. It is the profit that the claimant could have made that sets the baseline for the award. Some allowance may be made for the exertions made by the defendant, as it is presumed that not all sales made by the defendant would have been made by the claimant had there been no infringement.
Heads of Damages
Depending on the type of case, the following heads of damage have been established by previous case law:
1. Loss of profits
a. in the form of sales diverted away from the claimant by reason of the infringement;
b. lost margins on sales not made due to the pressing need to reduce prices due to price depression caused by the infringer.
2. Loss of goodwill and reputation to the claimant, which arguably has several dimensions;
3. Sums representing the benefit of the use of the invention by defendant in the market, which is qualified by taking the market value of the use. It is damages for the unauthorised use, which resonates as a license fee for the use and restitutionary damages (sometimes referred to as ‘gain based damages'), an area of damages law rarely pressed.
4. Lost profits on sales lost on goods that are commonly sold with the invention
5. Springboard Damages: damages that are suffered after the infringement by establishing a market presence through infringement and early entry into the market.
6. Diminution of value in subsidiary companies owned by the patent owner due to the loss of sales by them where the profits flow through to the holding company.
7. Depending on the nature of the patent, there may be losses sustained by loss of sales on products commonly sold with the patented products, provided it is foreseeable and caused by the infringement.
8. As a general rule a claimant was entitled to recover for losses and expenses reasonably incurred in mitigation.
Where the patent owner has reduced prices in a competitive market, a court may have regard for the argument that the patent owner could not have maintained their sales at current prices in that environment. This is a matter that goes to causation of damage – the claimant is not entitled to recover losses unless the defendant caused them.
In the case of infringement of a product, a good starting point for assessing damages is to obtain evidence of the number of infringing products made and in the alternatives sold, the sums received and the approximate costs incurred. This creates a reference point for the calculation.
The point needs to be made that the damages recovered in any particular case depends on the facts of the case. The general principle of awarding tortuous damages applies – that any losses caused by the infringement are recoverable, whether or not the particular heads appear in the list above. A defendant is said to take the claimant as they find them, and thus damages outside these heads of damages which are peculiar to the claimant will be recoverable in the appropriate case.
Making an Accounts of Profits
Defendants are not obliged to hand over the gross profit obtained by reason of the infringement. In keeping with the approach that the claimant is said to stand in the shoes of the defendant, a court will make allowances to the defendant for parts of the gross profit that are attributable to proper expenses associated with making sales, such as advertising and marketing; increases in value of goods or services once sold or provided and additional features of the product or service that are outside the infringing invention (such as value added services).
In the event an infringer makes a loss in a manufacturing process, the sum by which the infringing process reduces those losses are recoverable on an account.
Where it is difficult to separate out the different components of a process in order attribute a proportion of the profits, courts may decide to assign a percentage of the profits on the same percentage that the costs and expenses are attributed to them by adopting an accounting approach. A judge will make a reasonable approximation. Account may then be taken of the relative importance of the relative attractions of different parts of an infringing product. In this way the courts reserve a discretion to grant a larger slice of the profits where the infringement can fairly be said to play an important role in the profits obtained by the defendant. This approach takes a ‘base allocated profit' percentage and then that percentage is weighted for the importance to the profits obtained.
There are cases where the patented invention has readily discernable impact on profits, either positively or negatively. For instance, the patented invention may reduce the costs associated with the manufacturing process, making the process more efficient. In that case a larger share of the profits would be payable to the claimant on an empirical basis. It involves a comparison between the profitability achieved when the patented invention is used and on the other hand when it is not used. This brings consideration of efficiencies introduced by the invention into consideration for the calculation of the slice of the profits to be awarded to the claimant.
Making assessments of damages and accounts of profits frequently require the involvement of forensic accountants with some knowledge of the industry in which the infringement has taken place. As a general rule, an account of profits will probably be preferred in cases where the claimant cannot point to any damage in their own business. This will usually be the case where the margins of the defendant outstrip the profits that of the claimant.
Genetic Patent Law and Strategy
The evolution of genetic science promises the power to transform humanity. While the geneticists offer to cure the world of all its problems, the commons view the field with caution because of its interface with life. Though the benefits offered by the field seem to be unlimited, genetics as field is nascent and uncertain. The ambiguities inherent in the field pose challenges for application of the traditional patent principles to genetic inventions.Due to variations in social, economic and ideological conditions the patent law relating to genetic inventions is treated differently in different countries. Concepts under the patent law relating to gene-bases inventions like what is and what should be patentable, which inventions are useful, what should e the standard of novelty and non-obviousness, how should be imposed on the use of patented inventions in the name of morals, ethics and public policy have been expounded by laws of different countries in a diverse manner.
The ambiguity and diversity inherent in the application of patent law to genetic inventions makes the analysis of patentability and related business advantage complex. The complexity can be alleviated by studying the patentability of genetic inventions in USA, Euorope and India from a comparative perspective with the help of case studies and examples. The process of analyzing patentabliity and their impact on business can be simplified with help of patent filter model.
Patent Application in gene invention is done in most countries of the world including USA, India, Europe, Canada, China, Korea, Germany, Holland, Britain, Australia, Japan, Genetic patent application can be for gene patent, patent ductus arteriosis, patent ductus arteriosus, biotech patent, biotechnology patent, gene patenting, patent foramen ovale, patent medicine.
The Patent regime is believed to promote the progress of science and technology by providing incentives to inventors and inventors in the form of exclusive rights. Through these incentives, the patent system encourages investment for R&D, expands the limit of a discipline, fosters invention and mandates disclosure. As the incentives form the foundation for operation of the patent system, a granted patent would be an indication of R&D, inventive activity, and technology progress. Furthermore, as patents grant exclusive rights to exploit the inventions commercially for a limited period of time, they represent indicators of business activity.
Patents have been recognized to be a source of empirical data to understand and analyse inventive activity/innovation, trends and specifies in technology of development, R&D processes, technological change and innovation and investment patterns.
Obtaining Protection for Mask Works in the U. S
I. BackgroundThe U.S. mask work registration law was first enacted in 1984. Semiconductor Chip Protection Act of 1984, 17 U.S.C. §§ 901-14 ("SCPA"). The SCPA was enacted in the early days of IC fabrication in response to certain identified acts of IC copying. However, until very recently, mask work registrations in the U.S. were generally thought to be of little commercial value because mere copying of IC masks (without knowledge of the fabrication processing) was thought to provide little if any competitive advantage. However, the appellate decision in Altera Corporation v. Clear Logic, Incorporated, 2005 Lexis 19284 (9th Cir. September 15, 2005) breathed new life into mask work registrations. In this case, the appeals court found that ASICs manufacturer Clear Logic infringed a mask registration of Altera in which the infringement related to the functionality and *** general *** design of the masks and corresponding programmable logic device ICs, as opposed to a more narrow copyright type of "copying" protection initially envisioned by the SCPA. Clear Logic's business was based upon receiving from a customer an Altera bit stream from Altera's chip design software and reverse engineering an ASIC from the bit stream that would replace the original Altera programmable logic device with a corresponding Clear Logic ASICs chip. It is clear from the opinion that the extenuating factor of Clear Logic's business model swayed both the trial court and the appellate court to accept a very broad scope of protection of Altera's mask work registration.
II. Mask Work Registrations
U.S. mask work registrations cover novel and non-obvious aspects of mask designs used to produce semiconductor ICs. Term of protection extends from date of registration to the end of the tenth calendar year after registration (a little over 10 years). Mask work registrations are only examined for formalities, and therefore issue relatively promptly.
IC chip mask work registrations cover's "mask works" which are defined as a series of images however fixed or encoded in which each image has the pattern of the surface of one form of the semiconductor chip product. The initial owner of the mask work under U.S. law (see 17 USC 901) is the employer of the person creating the mask work (which means that no assignment to the company is required, unlike with U.S. patents).
The mask work's exclusive right extends (see 17 USC 902) to the original aspects of the mask work that are not variations of commonplace or familiar designs.
III. Notice and Enforcement
Registered mask works marked with (1) "mask work"; "*M*" or the letter "M" enclosed in a circle and (2) the name of the mask work owner provide constructive notice. Enforcement is via U.S. district court for plenary relief and via an International Trade Commission proceeding (ITC) border enforcement (territorial exclusion). 17 USC 910 and 911. A presidential proclamation in 1996 extended U.S. mask work protection to applicants from all WTO countries.
IV. Registration Requirements and Procedure
The power to define regulations for registering mask works is ceded by statute to the Registrar of Copyrights, of the U.S. Library of Congress. 17 USC 908. The registrar prescribes use of form MW for mask work registrations, and a $75.00 fee, per mask work registration. The Registrar defines requirements for submissions at 37 CFR 211 et seq. A mask work filing comprises at least: (1) Form MW, (2) payment for the fee, and (3) deposited mask works.
Form MW requires the following information:
Title: (for example the name of the corresponding IC product)
Nature of Deposit: (for example, "3 acetate sheets"; "3 photocopies of mask"; "2 ICs and 10 acetate sheets"). In this regard, acetate layers with opaque patterns have been used as actual chip mask. (It is unclear whether a paper photocopy would provide sufficient detail for small mask features.) The Deposit must be the most current form of the masks, subject to the following exceptions:
(1) an averment that the owner does not have access to the most complete form.
(2) owners of mask works in final forms of semiconductor chip products that are produced by adding metal-connection layers to unpersonalized gate arrays may separately register the entire unpersonalized gate array and the custom metallization layers. (Applicants seeking to register separately entire unpersonalized gate arrays or custom metallization layers should make the nature of their claim clear at Space 8 of application Form MW.) For these purposes, an "unpersonalized gate array" is an intermediate form chip product that includes a plurality of circuit elements that are adaptable to be personalized into a plurality of different final form chip products, in which some of the circuit elements are, or will be, connected as gates.
Get Patents & Reap Benefits
Today, we are living in the age of information technology & spreading our wings to every aspect of the society. We exchange our information (ideas, techniques, process, and product) to a target group but we never come to know this thing that someone is also targeting our information. So we are much prone to unintentionally leakage of our precious ideas as our information passes through different portals.It is the human tendency to share their innovative thoughts with their near & dear ones but that proves fatal, in most of the cases, in respect of the that original creation or your property i.e. intellectual property (IP).Most of the people acts indiscreetly & ignorantly which results in jeopardizing the chance of saving their intellectual property i.e. novelty of ideas as they comes under public domain & lose their chance to be protected by the INELLECTUAL PROPERTY RIGHTS.
Intellectual property literally means some academic or scholar work. Intellectual property (IP) pertains to any scholar or any original creation of the human intellect; that work can be artistic, literary, technical or scientific creation.
Intellectual property rights mean those rights which are given by the State to the inventor or creator to protect one’s invention or creation for a certain period of time.
Need for intellectual property rights:
For individual:
IP helps to protect investment of time, money, effort & such other resources of the inventor or creator.
For public:
IP provides a pool of information to the general public since all forms of IP are published in journals & magazines except in case of trade secrets.
For country:
IP provides a mechanism of handling infringement, piracy and unauthorized use & it encourages industrial development & technological advancement which leads to overall economic development of the country.
Bundle of rights:
IPR are bundle of rights i.e. it includes the various independent rights. Following are the various independent rights for which IPR collectively provides protection:
1. Patent Right(Patent Act,1971 & Patent Rules,2000)
2. Industrial Design(Design Act,)
3. Trademarks (Trademarks Act)
4. Copyright(Copyrights Act)
5. Geographical Indication(Geographical Indication Of Goods Act)
6. Trade secrets(Common Law)
7. Circuit Layout Design(Semiconductor Layout Design Act)
India at International level:
• The fact that India is a member state of World Intellectual Property Organization (WIPO), an international organization, responsible for the promotion of the protection of intellectual property throughout the world proves that India has proved its potential & has been acknowledged at international level.
We are here concerned with Patent Law; A patent is an exclusive right granted to inventor or creator of a useful or improved article or a new process of making an article for a specified period of time. After the expiry of the duration the invention becomes part of public domain i.e. everyone can use it. So Patent means monopoly rights of inventor in respect of an invention.
Geographical limits of the patent:
Patent is granted for a specific invention in a particular country in which an application is made for the same cause. There is no international patent as such though it has acquired an international character. For e.g. a patent granted in India is valid only for India and not in the USA. However, a patent granted in the EPO is valid in all the contracting states recognized by European Patent Organization. The protection so granted in a country / region not only identifies the rights of the creator/ inventor or his assignees, but also enables the right holder to enforce his rights against infringers.
Moreover, several international agreements, treaties & conventions exist to monitor that the inventor/creator are not denied of his/her rights like European Economic Community Treaty(EEC),Patent co-operation Treaty(PCT),European Patent Conventions and Protocols(EPC),Community Patent Convention and Protocols(CPC) resulting in a common patent office for granting common patents applicable to the member countries.
What can be patented?
Only inventions can be patented.Sec.2 (1) (j) defines invention as an invention means a new product or a new process involving an inventive step & capable of industrial application. Invention includes within its scope any new & useful improvements of any manner of manufacture, article or substance whether patented or not but such improvement must qualify independently to satisfy the pre-requisites of the patent i.e. novelty, inventive step & capable of industrial application.
Who may apply for patent?
An application for a patent may be made by inventor, either alone or jointly with another, or his/their assignee, legal representative of deceased inventor or assignee are entitled to apply. For e.g. If a person invents a new product or process & unfortunately soon after that he dies then his legal heirs can or any person authorized by him before his death can apply for patent.
Term & date of patent:
Term of every patent will be from 20 years from the date of filling of patent application & date of patent is the date on which the application for patent is filed, irrespective of the fact whether it is filed with provisional or complete application. To keep the patent in force renewal fee is to be paid every year. The first renewal fee is payable for the third year of the patent’s life & must be paid before the patent’s second anniversary. Term of patent can’t be extended beyond the specified term of patent.
Where a patent application should be filed?
The Indian Patent Office has its head office at Kolkata, which has three branch offices located at Mumbai, Chennai and Delhi. The Controller General heads the Patent Office and each branch has a Controller as its head. In case of an Indian applicant, the patent application must be filed at the patent office under whose jurisdiction the applicant’s has his place of work, or place of residence or place where he conduct business from.
For e.g. if an applicant provides a Chandigarh based address, the application must be filed at the Delhi Patent Office. In case of foreign applicant/s, the jurisdiction in which the patent application is filed would be based on the address for services of the applicant’s agent. For e.g. if the address for services for foreign applicant is based at Bangalore, the patent application must be filed at the Chennai Patent Office.
What are the rights given to the patentee?
The patentee (i.e. an applicant who has been granted a patent) has the exclusive right to prevent unauthorized third parties from making, using, offering for sale, selling or importing the patented product or process in India.
Patent information centre:
Patent Information Centre (PIC) has been set up in 20 states & is further expanding in other states. Patent information centre provides information regarding the techniqulities & procedure laid down by the government to get a patent. One can get all the information regarding the filing of the patent application & further procedure up till the patent is not granted. The centre provides general precaution for the applicant before & after applying for a patent. The most common mistake which an applicant often does is to publish their invention in newspaper or scientific & technical journals, before applying for patents. Publication of an invention, even by the inventor himself, would (except under certain rare circumstances) constitute a bar for the subsequent patenting of it. Similarly, the use of the invention in public, or the commercial use of the invention in public or even in secrecy, prior to the date of the patent would be a fatal objection to the grant of the patent. However the secret working of the invention by way of reasonable trial or experiment, or the disclosure of the invention to other confidentially may not result into loss of novelty.
Another mistake, which is frequently made by the inventors, is to wait until their inventions are fully developed for commercial working, before applying for the patents. Delay in making application for a patent involves certain risks. so it is advisable to apply for the patent as soon as one’s invention get a physical appearance with 3-D drawings sheets depicting the whole model.
Incentives for obtaining patents:
An innovative industry can gain competitive advantage in the market if it develops the necessary expertise and skills in developing and manufacturing new products, which are patented. For example, the advantage of a three year excise duty exemption or exemption from Drugs Price Control Order may translate into reserves / income which may offset the cost towards R&D. In order to promote R&D and innovation in Indian industries, Government of India provides a number of fiscal incentives and support measures to industries. Some of them are following:
• Excise duty waiver on the patented article for a period of 3 years from the date of commencement of commercial production provided that such products be designed &developed by wholly owned Indian companies.
• Exemption from drug price control for a period of 5 years from the date of commencement of commercial production provided that they are produced from the basic stage by a process of manufacture developed by the unit through its own R&D efforts.
• Weighted tax deduction @ 150% on R&D expenditure is available to companies engaged in the business of biotechnology, or the business of manufacture or production of drugs, pharmaceuticals, electronic equipment, computers, telecommunication equipment, chemicals and manufacture of aircraft and helicopters. The expenditure on scientific research in relation to drugs and pharmaceuticals shall include expenditure incurred on clinical trials of drugs, obtaining approval from the regulatory authority under any Central, State or provincial Act and the filing of a patent application in India.
• Depreciation allowance at a higher rate is available in respect of plant and machinery installed for manufacturing goods based on indigenous technology developed in recognized in-house R&D units, Government R&D institutions, national laboratories and Scientific and Industrial Organizations (SIRO). The present rate of depreciation for plant and machinery is 40% as against 25% for other plants and machinery.
• Income tax exemption:-Under Section 35(1)(i) of the Income Tax Act 1961, the revenue expenditure on scientific research, by recognized R&D units, on activities related to the business of the company is allowed full deduction. Under Section 35(1)(iv) expenses of capital nature could be deducted totally from the income of the year in which the expenses have been incurred. Section 35(2AA) of the IT Act 1961 provides for a weighted tax deduction of 125% for expenses on sponsoring research programmes at National laboratories functioning under ICAR, CSIR, ICMR, DRDO, Department of Biotechnology, Department of Atomic Energy, Department of Electronics; IIT and universities.
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