ECGR 3159

Professional Practice
Instructor: Dr. Wei Gao
Office: Cameron 286
Phone: (704) 687 5589

Class Hour: Thursday 2:30 pm – 3:20 pm

Office Hour: Monday 10:00 am – 11:00 am or by appointment

Venue: Online

Dr. Wei Gao ECGR 3159

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 ECGR3159

Lecture 5

Patent

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 The purpose of the patent system
• To encourage
– Development of new
inventions
– Disclosure new inventions.
• A remedy for the fear of been
copied.
• Gives the inventor a chance to
recoup the investments
– Monopolize the market,
– Exclude possible competitors
– High price/profit margin.
– License a patent
• Other people might be inspired to improve or alternate the patented
invention in case
– The inventor refuses to license his invention,
– The licensing fee is too high.
• Third parties could then
– Develop alternative technologies to work around the patent.
– Could patent these alternatives.
– Society benefits by having two inventions rather than one.
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 What is a patent Patented June 22 1880 Lewis
M. Hosea of Cincinnati, OH
• A patent is a temporary government-
granted monopoly right on
something made by an inventor. From U.S.
Patent No.
– Utility patent, protects inventions. 2,289,996,
– Design patents protect new, original entitled
and ornamental designs of articles of “Velocipede.”
manufacture.
• A utility patent gives a 20-year right
to stop anyone from practicing the
protected invention. Maintenance
fees need to be paid at 3.5, 7.5, and
11.5 years
• Design patents are valid for 14 years
from the date of issue if filed prior to
May 13, 2015, or 15 years from the
date of issue if filed on or after May
13, 2015. There are no maintenance
fees.
• The trademarks can last indefinitely
as long as they are used in commerce
https://www.iusmentis.com/patents/crashcourse/whatis/
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 Use of the patent system
• Applying for patents can be
very expensive, especially
when doing so in multiple
countries.
– Most useful for larger
companies.
– Small inventors often only
apply in their own country, if
at all.
– The most popular reason is
the possibility to earn
licensing money,
– In some fields exclusivity is
the most important reason
(e.g. pharmaceuticals) .
• Much stronger than
copyright.
– Copyright only protects the
expression of some idea
– A patent protects the idea
itself
• Used as bargaining chips.
• Important indication of the
worth of a company.

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 Requirements for patentability
• Novelty
– Novel in the absolute sense.
– Novelty requirement is
strict, e.g. a nail vs a screw;
– Determination of novelty
can get extremely picky, e.g.
5 – 15 % vs 10%
• Obviousness
– Insight vs hindsight

• Industrial application (utility)

– Aesthetical vs scientific
inventions.
– Industry has a broad
meaning, including
agriculture.
– Not include surgery, therapy,
and diagnostic methods on
human and animals
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 • Patent application
includes information
detailed enough for the
average skilled person to
be able to reconstruct it.
– Abstract
– Field of the invention
– Description of Related
Art
– A Summary of the
Invention
– Detailed description
– Claims
• Writing a patent
application is a tricky
business. Hire a patent
attorney to do it right.

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 • Issued Patent – almost
the same as the patent
application
– Patent number
– More legal
information
– Modifications during
filing process

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 International patent treaties
• The Paris Convention
– Someone who has filed a patent application in any
country that is a member to the Paris Convention (177
countries in 2019), can within one year after that
filing file patent applications in other countries,
claiming the filing date of the first application as the
effective filing date of the later applications.

• The Patent Cooperation

Treaty (PCT)
– An applicant starts a patent
application process and
"designates" all the countries
he wants to have patent
protection. Process continue in
each country after initial
search.
• The European Patent
Convention (EPC)
– An applicant files a single
European Patent Application
and designates the countries
in Europe in which he wants to
have patent protection.
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 Patent infringement
• When an unauthorized party sells,
imports, uses or makes a product that
someone else holds the patent on
without permission.
• The law suit, if wish to, must start
within six years from the date of
infringement.
• Patents are invalid and unenforceable
if:
– Not have approval from the USPTO
– Fraudulent information in the USPTO
application
– Resulted from anticompetitive
business activities
– The alleged infringer can show that
the patent did not meet the
requirements of novelty and non-
obviousness required by the USPTO
• The burden of proof is on the patent
holder to show that the defendant
made patent infringement actions. https://ghbintellect.com/patent-infringement/
• This why there is Trade Secrets
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 Four Types of Patent infringement
• Direct Infringement: When a product covered by a
patent is manufactured without the permission.
• Indirect Infringement: When an unauthorized
party may encourage or aid another in infringing
upon a patent.
– Contributory Infringement: When an unauthorized
party supplies a direct infringer with a part that has no
substantial non-infringing use.
– Infringement by inducement: any activity performed
by a third party that causes someone to directly
infringe on a patent

• Willful and Literal Infringement

– Willful infringement: an act that involves
a complete disregard for patent
protection
– Literal Infringement: the exact copy of a
patented item being used, sold, or
imported.
• Doctrine of Equivalents Infringement:
not exactly the same as the patented
item, but the item performs the same
https://www.bltg-ip.com/what-are-the-different- function and yields the same results.
types-of-patent-infringement/
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 Examples • Nintendo was forced to pay a large
sum to Tomita Technologies
International, Inc. for its 3DS
gaming-system technology.
• Microsoft and Google dueled for
five years over patent issues
involving the Xbox gaming system
and Motorola smartphones.

• Amazon tried to patent its one-click

payment option. However, the court
decided it was too obvious an idea
to patent.
• The file-sharing company Napster
settled a lawsuit accusing it of
unauthorized distribution of music.
It later filed bankruptcy.
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 Crazy Claims and Cases for Trademark Abuse
• Both Monster and Hansen Beverage tried to
claim rights to the word "monster."
• T-Mobile tried to seek trademark protection
against anyone using the color magenta.
• "Family Feast" was the term that KFC tried to
claim ownership of.
• The game design company Edge was able to https://www.bizjournals.com/losangeles/news/2017/02/10/i
trademark every use of the word "edge" for its n-n-out-burger-says-dry-cleaner-stole-its-logo.html
game titles.
• There is a copyright for silence that is owned
by composer John Cage.
• Jay Z was involved in a lawsuit over a hand
gesture.
• CosbySweaters.com was sued by and lost a http://seattletrademarklawyer.com/blog/2013/
case to Bill Cosby. 5/13/stl-reader-on-infringement-safari.html

• John Waters sued Nickelodeon over its use of

scratch-and-sniff cards.
• A small furniture company was sued by Clint
Eastwood over a global brand and name
recognition suit.
• A former impersonator of Miss Ukraine sued
singer Carly Rae Jepson, claiming that Jepson
stole lyrics from one of her songs.
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 Interesting Trademark Claims
• "Jersey Shore" star Nicole Polizzi tried to obtain a trademark for her nickname
“Snooki," but failed.
• Paris Hilton won a case against the greeting card company, Hallmark, for using her
“That's hot” catchphrase, which she trademarked.
• Twitter attempted to trademark its word for messages, "tweet," but failed.

• Thanks to a trademark
won by Boise State
University, it is the only
stadium allowed to put
blue turf on its football
field.
• Facebook currently owns
the simple word "face"
and “book” through a
trademark.
• Donald Trump tried to
own his favorite
exclamation, “You're
fired!” but failed.

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 Tentative Course Plan
Week Date Lecture Homework
1 9/10 Introduction, project examples. Form team, elect team leader, name your company
R&D/prototyping including risk Literature search, paper reading, and brainstorming to
2 9/17
management and mitigation. decide the product and. Start R&D plan
3 9/24 Team player and work ethics Finalize the R&D plan, improve, polish, and turn in.
4 10/1 Technical Proposal Start the proposal draft
5 10/8 About patent Finalize the proposal, improve, polish, and turn in.
6 10/15 Commercialization plan Start 1st draft of the commercialization plan
7 10/22 Understand Corporate structures Finalize the commercialization plan
8 10/29 Understand Business Regulations Improve, polish, and turn in.
9 11/5 Understand Accounting Prepare the 1st PPT draft
10 11/12 Understand Startup business Finalized PPT, rehearsals
11 11/19 Final exam
• Assignment in red needs to be submitted to
12 12/3 Group presentation 1 – 3 canvas before 11:59 pm following Sunday
13 12/10 Group presentation 4 – 6 • Team member take turns to compile the
14 12/17 Group presentation 7 – 16 2 – 4:30 final version of the assignments

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