Homework answers / question archive / PATENTS, LICENSING AND INNOVATION 19-473 / 19-673 Assignment #1 Patentability  (70 points total) (a) (3 points) You have an invention you would like to patent

PATENTS, LICENSING AND INNOVATION 19-473 / 19-673 Assignment #1 Patentability  (70 points total) (a) (3 points) You have an invention you would like to patent

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PATENTS, LICENSING AND INNOVATION 19-473 / 19-673

Assignment #1

Patentability  (70 points total) (a) (3 points)

You have an invention you would like to patent. How much of your invention do you need to describe in order to be granted a patent for that invention?

You must describe enough detail to let you (the inventor) replicate the invention.

You must describe enough detail so that a patent lawyer is able to replicate the invention.

You must describe enough detail so that a person with ordinary skill in the field of the invention is able to replicate the invention.

You must describe enough detail so that an expert in the field of the invention is able to replicate the invention.

2. (2 points)

You have an invention you would like to patent. In order to be granted a patent for that invention, where exactly must you put the description of your invention mentioned in the previous problem?

The description is in the patent application

The description is given verbally to an examiner in the patent office

The description is in a form filed after the patent application is filed

3. (5 points)

You invent a new invention on January 1, 2018. You file a patent application for that invention on January 1, 2019. The patent office grants you a patent on January 1, 2020. What is the earliest date you can use the patent to exclude other firms from selling the invention?

January 1, 2018

January 1, 2019

January 1, 2020

4. (5 points)

You invent a new invention on January 1, 2018. You file a patent application for that invention on January 1, 2019. The patent office approves your patent application on November 1, 2019. Your patent is granted on January 1, 2020.

On July 1, 2019 (which is before you know whether you will ever be granted a patent) are you allowed to license your patent application?

Yes you are allowed

No you are not allowed

5. (10 points)

You create an invention. Nothing even remotely similar to your invention exists or has ever existed. You tell an audience at a conference about the details of your invention, but you do not tell anyone else. The audience thinks it is a silly idea and each member of the audience never tells anyone else about your invention. You file a patent application for your invention, and the patent application contains a detailed description that would allow anyone to understand how to duplicate the invention.

At the time that you file your patent application, your invention is:

Definitely patentable because it definitely satisfies all requirements for patentability

Definitely not patentable because it definitely fails at least one requirement for patentability

Possibly but not definitely patentable because it may or may not satisfy the works requirement.

Possibly but not definitely patentable because, although it definitely satisfies the works requirement, it may or may not fail at least one requirement for patentability.

(f) (10 points)

You have two inventions.

Invention #1 is: a chair that is rectangular and made of leather.

Invention #2 is:

a chair that is rectangular and made of black leather, with a pocket for a television remote

control.

Assume it is simple to satisfy the “works” requirement for both Invention #1 and #2. Which of the following four answer choices is impossible?

There is a previous invention that makes both Invention #1 and Invention #2 unpatentable.

There is a previous invention that makes neither Invention #1 nor Invention #2 unpatentable.

There is a previous invention that makes Invention #1 not patentable, but Invention #2 remains patentable.

There is a previous invention that makes Invention #2 not patentable, but Invention #1 remains patentable.

7. (10 points)

Assume there are two patents, and both are valid because both satisfy all requirements for patentability.

Patent #1 has a claim that covers the following invention: a chair that is rectangular and made of leather.

Patent #2 has a claim that covers the following invention:

a chair that is rectangular and made of black leather, with an pocket for a television remote control.

Everything else about both patents is equal. Which patent is more valuable and why?

Patent #1 is more valuable because it covers more.

Patent #1 is more valuable because it covers less.

Patent #2 is more valuable because it covers more.

Patent #2 is more valuable because it covers less.

8. (10 points)

Your team comes up with an idea for a hand-held, portable 3D printer. There are absolutely no patents and no patent applications on any type of hand-held, portable 3D printer, and in fact there are no patents and no patent applications on anything even remotely similar to this invention. You and the team decide to file a patent application for the invention.

At the time that you file your patent application, your invention is:

Definitely patentable, because it definitely satisfies all requirements for patentability

Definitely not patentable, because it definitely fails at least one requirement for patentability

Possibly but not definitely patentable, because it may or may not satisfy the absolutely new requirement

Possibly but not definitely patentable, because, although it definitely satisfies the absolutely new requirement, it may or may not fail at least one requirement for patentability

1. (5 points)

You want to make plastic pencils with erasers attached at the end. You were recently granted a patent for a plastic pencil with an eraser attached at the end.  Another firm owns a patent for a plastic pencil.

Does your patent give you the right to manufacture and sell plastic pencils with erasers attached at the end, without worrying about the other firm's patent for a plastic pencil?

Yes, you don't need to worry

No, you may need to worry

10. (10 points)

You invent a new way of salting peanuts while they are in the shell. There is not, and has never been, any other way of salting peanuts or anything else in their shells. You have never actually tested this invention, and you have never even mentioned your invention to anyone else. Therefore, you have no idea if the invention really works or if it would just burn all the peanuts to a crisp. You file the patent application without ever testing the invention.

The company “Five Guys Burgers & Fries” has over a thousand stores in the US. The Five Guys CEO, Jerry Murrell, likes your patent application so much he sends a copy to every employee in the US. Hundreds of different Five Guys employees from several dozen different stores read your patent application and use it to build your invention very quickly. The invention works perfectly, and the Five Guys employees are very happy because this lets them make salted peanuts in these stores for their customers much more quickly.

At the time that you file your patent application, your invention is:

Definitely patentable, because it definitely satisfies all requirements for patentability

Definitely not patentable, because it definitely fails at least one requirement for patentability

Possibly but not definitely patentable, because it may or may not satisfy the absolutely new requirement

Possibly but not definitely patentable, because, although it definitely satisfies the absolutely new requirement, it may or may not fail at least one requirement for patentability

2. Patent Searching  (30 points total)

(a) (10 points)

Use any part of the U.S. patent office's search engine to determine how many patents owned by Apple have its former CEO Mr. Jobs as an inventor.

Hint: Get to know your data before answering – the search engine is very literal and not at all ‘smart’. A good search strategy is to try simple broad queries, review the results, and modify the query when the results appear either to include irrelevant results or to omit relevant results.

Note: You should report the number of all patents returned in the search, which will be the total number of utility patents as well as design patents. You don’t need to go through the list of results and eliminate the design patents from your count.

CAUTION

It is common for the US Patent & Trademark Office web site to be unavailable for relative long periods of time.

Do not wait until the deadline to do search questions. If you do, you may have difficulty connecting to their patent search page and completing this homework.

The number of patents that are owned by Apple and have Apple’s former CEO Mr. Jobs as an inventor is:

0

1 – 48

49 – 185

186 - 381

382 – 393

394 - 528

529 – 545

546 - 553 554 - 649 650 - 672 673 - 707 more than 707 (b) (10 points)

Your company is considering hiring a person named Kathy Smith, who you know is an inventor on several patents. You have been instructed (i) to determine the number of patents she is an inventor on, and also (ii) to create a list of the titles of those patents (and only those patents she is an inventor on). The list of titles will be given to your company’s CEO.

You do a search for all patents that have an inventor named “Kathy Smith”, and this search gives you 123 patents.

Note: do not actually perform a patent search for this problem – it won’t help at all.

Which of the following is true?

The 123 patents you found (a) might include patents that should not be on the list of patent titles that you must give to the CEO, and (b) might not include other patents that should be on the list of patent titles you must give to the CEO.

The 123 patents you found  (a) will definitely include patents that should not be on the list of patent titles that you must give to the CEO, and (b) might miss patents that should be on the list of patent titles you must give to the CEO.

The 123 patents you found  (a) might include patents that should not be on the list of patent titles that you must give to the CEO, and (b) will definitely miss patents that should be on the list of patent titles you must give to the CEO.

The 123 patents you found (a) will definitely include patents that should not be on the list of patent titles that you must give to the CEO, and (b) will definitely miss patents that should be on the list of patent titles you must give to the CEO.

(c) (10 points)

Use the U.S. Patent Office's “Quick Search” feature to determine how many patent applications (not patents) have an inventor with first name “Jay” and last name “Walker”.

How many patent applications have an inventor with first name “Jay” and last name “Walker”?

0 - 582

583 - 980

981 - 1089

1090 - 1266

1267 - 1394

1395 – 1522 1523 – 1529 more than 1529