Corporate Insider's Guide to U.S. Patent Practice

Corporate Insider's Guide to U.S. Patent Practice

by Charles Macedo

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Corporate Insider's Guide to U.S. Patent Practice authored by Charles R. Macedo: Given the growing importance of patents to businesses both in the United States and abroad, there is a growing demand for a succinct guidebook to serve as a reference for attorneys and "c-level" executives who have not (and most likely will not) be trained as specialists in the patent field. The Corporate Insider's Guide to U.S. Patent Practice meets this need by providing a basic understanding of patent practice in the United States as it relates to both obtaining and enforcing patents. It also provides an overview of patent licensing and related transactions.

Written by Charles R. Macedo, a practicing attorney at an elite intellectual property firm, The Corporate Insider's Guide to U.S. Patent Practice offers readers a high-level, practice-oriented approach to patents that never loses sight of the business implications at stake. In short, it teaches what every executive should know in terms of how best to spot patent-related issues effecting both short and long-term organizational goals.


•   Offers a strategic, practice-oriented overview of United States patent practice
•   Highly qualified author/attorney affiliated with elite firm and possessing a wealth of experience in patent practice in the U.S. and abroad
•   Ideal for in-house counsel looking for a compact and accessible guide to the essentials of patent practice


"Charles Macedo has transformed the once alien topic of patents into a clearly written, practical guide for any business manager. Anyone interested in understanding the creation, use, and defense of patents should read this essential book."

-Bruce Bent II, Vice Chairman and President

Double Rock Corporation

"The Corporate Insider's Guide to U.S. Patent Practice is a comprehensive, lucid, and accessible resource for both corporate counsel and their in-house clients."

-Michael Bishop, General Counsel

AT&T Intellectual Property, Inc.

"Macedo's clear presentation will be invaluable to any business owner wanting to properly structure the ownership of patents at the time of application, and ultimately to save money and maximize sale proceeds."

-R. O'Neal Gray, Founder

Rearden Capital Corporation

"Is this book worth buying? Let's put it this way: Before I had even finished reading it, I had bought a copy and overnighted it to a client. After I finished it, I bought a second copy for another client."

--Herbert R. Schulze

The Colorado Lawyer

"For the first time, corporate intermediary participants in the US patent system have access to a reference text that is dedicated to addressing their specific needs. The Corporate Insider's Guide to U.S. Patent Practice is precisely what it professes to be, and it should be embraced by corporate insiders everywhere."

--Journal of Intellectual Property Law and Practice

Product Details

ISBN-13: 9780769870106
Publisher: LexisNexis
Publication date: 03/14/2013
Sold by: Barnes & Noble
Format: NOOK Book
File size: 7 MB

About the Author

Charles R. Macedo is a Partner at Amster, Rothstein & Ebenstein, LLP. He specializes in intellectual property issues including litigating patent, trademark, and other intellectual property disputes, prosecuting patents before the U.S. Patent and Trademark Office and other patent offices throughout the world, registering trademarks and service marks with U.S. Patent and Trademark Office and other trademark offices throughout the world, and drafting and negotiating intellectual property agreements. Mr. Macedo graduated from Columbia Law School as a Harlan Fiske Stone Scholar and was the Managing Editor of Columbia Business Law Review. His writings have been reprinted in numerous textbooks and cited to the U.S. Supreme Court as authority.

Table of Contents

About The Author xi

Acknowledgments xiii

Foreword xv

Chapter 1 What is a Patent? 1

Chapter 2 Why Seek Patent Protection? 7

2.1 Patents Can Turn an Intangible Asset into Something Tangible and Well Defined 8

2.2 Patents Can Evidence That an Organization Is an Innovator and Thus Can Be Used as an Effective Marketing Tool 9

2.3 Patents Can Protect a Product or Product Line and Potentially Keep Out Competitors 11

2.4 Patents Can Be Used as a Source of Revenue 13

2.5 Patents Can Be Used as Something to Trade When Others Start Asserting Patents 14

2.6 Patents Can Create Prior Art to Others 15

2.7 Patents Can Help Establish an Effective "Design Around" 15

2.8 Patents Can Be an Impressive Decorative Item on the Wall 16

Chapter 3 What Is Patentable? 17

3.1 "New" (or "Novel") 17

3.2 Not "Obvious" 21

3.3 Useful 24

3.4 Patent-Eligible Subject Matter 24

3.4.1 Claims That Cover Merely "Fundamental Principles" Are Excluded from Patent-Eligible Subject Matter 25

3.4.2 Statutory Classes of Patent-Eligible Subject Matter 27 Processes 27 Machines 32 Manufactures 33 Compositions of Matter 33

Chapter 4 What to Patent 35

4.1 Understand the Business 36

4.2 Define the Business and the Business Road Map 39

4.3 Understand the Details of the Product Lines 40

4.4 Understand where the Business Operations Occur 43

4.5 Identify Supporting System and Services (Non-Core Business) 45

4.6 Understand What is Necessary to Make the Business Work 46

4.7 Get Management "Buy-In" 46

4.8 Establish an Appropriate Budget 48

4.9 Set Up Patent Policies and Procedures to Encourage Participation of Key Employees 48

4.10 Determine whichInventions to Pursue 50

Chapter 5 How to Protect an Invention 51

5.1 Define the Invention 51

5.2 Document the Development 52

5.3 Retain Evidence of Commercial Success 54

5.4 Development and Inventions Should Be Maintained in Secrecy 54

5.5 Prior Art Should Be Searched 55

5.6 File Quickly and Act Diligently 57

5.7 Understand the Nature and Importance of the Invention 58

5.8 Mark Products and Notify Competitors of Published Patent Applications and Issued Patents in a Prudent Manner 59

Chapter 6 How to Get Patent 63

6.1 Defining the Invention 64

6.2 Conducting a Prior Art Search (Optional but Recommended) 67

6.3 Preparing a Patent Application (Mandatory) 70

6.4 Prosecuting a U.S. Patent Application (Mandatory) 73

6.5 Continuing Patent Application(s) (Optional) 74

6.6 Issuance of a U.S. Patent 76

6.7 Post-Issuance of a U.S. Patent (Mandatory to Keep Patent in Force) 77

6.8 Non-U.S. Patent Applications (Optional) 78

6.8.1 PCT Applications and International Search Reports 78

6.8.2 Non-PCT Countries 78

6.8.3 Non-U.S. National Fillings for PCT Countries 79

Chapter 7 How to Read a Patent 81

7.1 Identifying Information 81

7.1.1 Title 82

7.1.2 Patent Number and Issue Date 83

7.1.3 Application Number and Filling Date 85

7.1.4 Prior Publications 87

7.1.5 Inventors and Assignees 88

7.1.6 Prior Art of Record/"References Cited" 89

7.2 Abstract 90

7.3 Field of Invention 91

7.4 Background of Invention 92

7.5 Summary of Invention 93

7.6 Figures and Description of Figures 94

7.7 Detailed Description of Invention 95

7.8 The Claims 96

Chapter 8 What Is Prior Art? 99

8.1 Patents and Printed Publications 100

8.2 Prior Knowledge or Use 105

8.3 Prior Sale 106

8.4 Derived from Another 107

Chapter 9 What to Disclose to the Patent Practitioner 109

9.1 Complete and Accurate Details of the Invention 109

9.1.1 The Intended Operation of the Invention 110

9.1.2 Potential Construction and Operation of Competitor's Products or Services in the Context of the Invention 112

9.1.3 Potential Future Modification of the Invention 113

9.1.4 Best Mode of Practicing the Invention 113

9.1.5 Historical Record of the Invention 114

9.2 Prior Art 115

9.3 All Potential Inventors and Their Contributions 117

Chapter 10 Type of Claim Coverage to Seek 121

10.1 The Parts of a Claim 121

10.2 Different kinds of Objections to Claims 123

10.2.1 Indefiniteness and Lack of Antecedent Basis 123

10.2.2 Not Statutory Subject Matter 124

10.2.3 Lack of Support in the Specification 125

10.3 Common Terms Used in Patent Claims 125

10.3.1 "Comprising" versus "Composing" versus "Including" 126

10.3.2 Numbers 127

10.3.3 "First," "Second," "Third," etc. 128

10.3.4 "The" and "Said" 128

10.3.5 Terms of Degree 129

10.4 Different Kinds of Claims 129

Chapter 11 How to Construe a Patent Claim 131

11.1 Instrinsic Evidence 133

11.1.1 The Claim Itself 133

11.1.2 Patent Specification 135

11.1.3 Prosecution History 137

11.1.4 Prior Art 138

11.2 Extrinsic Evidence 139

11.2.1 Dictionaries and Treatises 139

11.2.2 Experts 140

11.2.3 Inventor Testimony 140

11.2.4 Prosecuting Attorney Testimony 141

11.3 Claim Construction Maxims 141

Chapter 12 How to Determine Infringement of a Patent Claim 145

12.1 All Elements of the Claim Must Be Present Literally or by Their Equivalents 145

12.2 Direct Infringement 152

12.3 Contributory Infringement 152

12.4 Inducing Infringement 154

Chapter 13 How to Enforce a Patent 155

13.1 Goals 155

13.2 Demand Letters 156

13.3 Confirm the Assertion Prior to Starting a Lawsuit 157

13.3.1 The Patent(s) 158

13.3.2 The Accused Product(s) or Service(s) 161

13.3.3 The Infringing Actors 161

13.3.4 The Risks 164

13.3.5 The Goal 166

13.4 Address Counter-Patents 166

13.5 Set Up Procedures for Gathering and Preserving Documents and Electronic Evidence 166

13.6 Select and Obtain an Appropriate Venue 167

13.7 Steps to Take Pre-Lawsuit to Prepare for Litigation 168

Chapter 14 Where to Resolve a Patent Disute 171

14.1 Courts 171

14.2 International Trade Commission 182

14.3 USPTO 186

14.3.1 Reissue 187

14.3.2 Reexamination 189

14.4 Private Arbitration or Mediation 191

14.5 Courts and Patent Offices Outside the United States 192

Chapter 15 What Is a Patent Worth? 193

15.1 Patent Term 194

15.2 Pre-Issuance Damages 196

15.3 Post-Issuance Compensatory Damages 198

15.3.1 Lost Profits 198 The Panduit Test 199 Diverted Sales 200 Price Erosion 201 Market Value Rule 201

15.3.2 Reasonable Royalty 202

15.4 Enhanced Damages 203

15.5 Limitations on Damages 207

15.5.1 Notice and Marking 207

15.5.2 Statute of Limitations 209

15.5.3 Laches 210

15.5.4 Estoppel 211

Chapter 16 How to Avoid Willful Patent Infringement 213

16.1 Reviewing and Understanding the Patent and Claims 213

16.2 Seeking and Obtaining Advice of Outside Patent Counsel 214

16.3 Developing and Implementing "Design Arounds" 214

16.4 Developing an Appropriate Record of Respect 215

Chapter 17 When Can a Patent Stop a Competior? 217

17.1 Irreparable Harm 218

17.2 Whether Remedies at Law Are Adequate 220

17.3 Balance of Hardships 220

17.4 Public Interest 221

Chapter 18 How Rights Are Transferred 223

Epilogue 225

Notes 227

Index 253

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