Being a patent lawyer is a profession that can be complex and contentious.  But what a patent lawyer really does is tell stories about people who make new things.  This presentation is a story about innovation - the almost mystical force behind our human penchant for making new things. Because patent lawyers have a creative license to be their own lexicographers in the stories they tell. Patents are the IP tool that societies have developed for encouraging investment in innovation while, at the same time, fostering technology disclosure. The origins of patent grants trace back to Venice and England when the crown, always looking for new ways to make money, came up with a scheme for granting exclusive rights a tradesman as a way to break the grip the trade guilds held on technology then by their practice of keeping information about new technology as trade secrets that were passed from master to apprentice Understanding the origins of patents is not just an academic exercise.

1. © 2014-17 Patterson Thuente Pedersen, P.A., May be distributed with attribution - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein are intended for educational and
informational purposes only and should not be construed as legal advice.
A Primer
on
Patent Rights,
Singularity & Infropy
Brad Pedersen
December 6, 2017

2. 2
Intellectual Property (IP) Tools
May 30, 2018
2
 Patents
 Strongest protection
 Most expensive and difficult to obtain
 Copyrights
 No protection vs. independent development
 Easiest and least expensive to obtain
 Key for protecting “data”
 Trademarks/Domain Names
 Protection grows based on fame
 Trade Secrets
 Must be secret
 No protection vs. independent development

3. 3 May 30, 2018
3
PATENT TRADE SECRET TRADEMARK COPYRIGHT
Subject Matter Devices, apparatus,
machines, systems, kits
All things listed under
PATENTS, but kept
secret instead of
patenting
Company names and
logos, product names
Books, articles,
brochures, photos,
architectural and artistic
designs, software code
Right to Exclude Making, using, selling,
importing
Unfairly acquiring Using similar mark on
similar product
Copying (all or part)
Scope of
Protection
Potentially broad, defined by
the claims
Typically narrow,
limited to the secret
Proportional to the
commercial strength of
the mark
Typically narrow,
limited to the work, fair
use exceptions
Duration of
Protection
20 years from the effective
filing date of an application
Perpetual (until not
secret)
Perpetual (until not
used or abandoned)
Varies (usually 50+
years)
Cost Expensive Inexpensive Moderately expensive Inexpensive
Legal
Requirements
New, useful & non-obvious Commercial value &
secret
Source indicating &
creative
Original work & fixation
(in a tangible medium)

4. 4 September 4, 2014
4
Patents

5. 5 September 4, 2014
5
Origins of Patents
Venetian Statute of Industrial Brevets
(1474)
English Statute of Monopolies
(1623)

6. 6 September 4, 2014
6
U.S. Patent History
US Constitution – Article I, Section 8
(1787)
Patent Act of 1790
SECTION 8
The Congress shall have Power
. . .
To promote the Progress of Science and useful
Arts, by securing for limited Times to Authors
and Inventors the exclusive Right to their
respective Writings and Discoveries;
Patent Act of 1836
Restored examination and represents
the start of the modern Patent Office
Authorized a Patent Board to grant
or refuse a patent after deciding if
the invention or discovery was
“sufficiently useful and important.”
Patent Act of 1790
Dropped examination of patents
before grant, validity was determined
by a jury at trial

7. Three Kinds of Patent Grants
7
 Design Patents for aesthetic aspects of:
 Ornamental and non-functional designs
 Term is limited to 14 years
Utility Patents for functional aspects of:
 Apparatus or Machines
 Processes or Methods
 Compositions of Matters
 Items of Manufacture
 Term is limited to 20/21 years
 Plant Patents for:
 Asexually reproduced plants
 Term is limited to 17 years

8. What a Patent Does Not Grant
8
A Government Enforced Right:
 Patents must be enforced by the Owner
A Guarantee of Freedom From Other Patents:
 Patents only grant a right to Exclude
 There is no right to Practice a patent
 Patents stack like 1000 geological layers of claims
A Guaranteed Right to Exclude:
 Patents are presumed valid once granted
 But can be invalidated at Patent Office or Court
 Patents can only exclude activities in the country
that grants the patent
A Right to Stop Non-Commercial Activity:
 Generally enforced only if commercial damages

9. Patent Application Requirements
9
 Applications Filed at USPTO Include:
 Background and Summary
 Figures showing the invention
 Specification describing the invention
 Claims claiming the invention
 Inventor oath/declaration
Application Must Describe and Teach the Invention:
 Describe the invention as of the effective filing date
 No opportunity to amend the Specification or
introduce new matter, although Claims may be
amended based on the description in the Specification
 Enable a person skilled in the art to make and use the
invention
 Application does not have to be production
specification

10. Patentability Requirements
10
Patent Claims Must Define a Scope that is:
 Patent eligible subject matter (35 U.S.C.§101)
 New, and
 Not obvious over the prior art
The test for “new” (Anticipation - §102):
 Claim is anticipated if a single prior art reference
teaches all the elements/limitations in the claim
The test for “not obvious” (Obviousness - §103):
 Claim is obvious if a person skilled in the art would
have combined the claim elements/limitations based
on what is taught in multiple prior art references
 Supreme Court raised the bar on what is “obvious”
(KSR - 2007):
 the person skilled in the art is not an automoton, and
 the claim to an adjustable accelerator pedal was obvious
over a combination of six prior art references

11. Subject Matter Not Patent Eligible
11
Purely Mathematical Algorithms:
 Algorithms implemented by a machine or computer
are permitted if the claims do not cover every
possible implementation of the algorithm
 But the innovation to be protected can’t be just an
“abstract idea”
Laws of Nature:
 Physical, chemical and biological laws
 Patents can claim a law of nature as applied to a
process or machine if the application is something
more than just “applying the law”
Abstract Concepts:
 Pure business methods like legal contracts and
financial processes
 Pure signals not embodied in tangible form

12. 12
Patent Eligibility Cases
 Alice v. CLS Bank
Claims to a computer-implemented electronic
escrow service for financial transactions
Software patents claiming nothing more than an
abstract idea implemented on a general-purpose
computer are not patent eligible
 Mayo and Myriad
Mayo - claims to dosing based on test of metabolites
Myriad - claims to diagnosing cancer by using
isolated DNA
Discovery of these natural phenomenon and their
use in diagnosing/treating are not patent eligible
May 30, 2018
12

13. Prior Art for a Patent
13
 Prior Art Standards
 America Invents Act (AIA) changed US patent law as
of 2013 from a First-to-Invent (FTI) system to a First-
Inventor-to-File (FITF) system
 Prior Art under FITF is determined by the effective
filing date, not the date of invention
 FITF in US is still different than First-to-File (FTF) prior
art standards used elsewhere around the world
 Work continues on substantive harmonization of
worldwide standards for what is prior art
Duty of Candor:
 Inventors, attorney and company must disclose
known prior art to Patent Office that is material
 Standard for whether something is material is a“but
for”standard – would the patent not have been
granted if the prior art was not disclosed
(Therasense)

14. The Spectrum of Prior Art
14

15. 15
America Invents Act (AIA)
 Signed into Law
September 16th, 2011
 Three Big Changes
First-Inventor-To-File (FITF)
(cutover - 3/16/13)
PTO Fee Setting Authority
until 2018
Changes to Patent Validity
Challenges at the PTO –
Inter Partes Review (IPR)
May 30, 2018
15

16. May 30, 2018
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FIG. 1 – Scenarios where both parties are seeking a patent
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
AIA – First-Inventor-To-File Is Different

17. 17
Patents After the AIA
Evolving Law and Practice
May 30, 2018
17
Patents After the AIA:
Evolving Law and Practice
is a comprehensive treatise that
will serve as every patent
professional's go-to reference and
guide to tactical and strategic
patenting decisions after the
most comprehensive revision to
US patent law since 1952, the
America Invents Act (AIA).

18. 18
Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives,
21 Int’l Rev. Indus. Prop. & Copyright L., 497, 499 (1990)
“To coin a phrase, the name
of the game is the claim.”

19. 19
Patent Claiming: A Two Step Process
May 30, 2018
19
 Identifying the “invention”
 Understand the “prior art”
 Is it “cute” or is it “sexy”
 Expressing that “invention”
 Claims  Fences
 Claims  Checklists

20. 20
20
Claims Define What is
New and Not Obvious
September 4, 201420
A vessel for holding liquid comprising:
a generally cylindrical side wall that
defines an opening at one end with a
bottom wall at an opposite end;
a handle secured to an outer surface of
the side wall
wherein the handle defines an opening
through which at least two fingers
can be inserted.
As an example, lets write a
claim for a coffee cup
The “invention”
The “prior art”

21. 21
Real “Life” Claim Analysis
21
1882 Patent to Fearnaught:
 US Patent No. 260,397
 Insured you were not
buried alive by providing
a rope you could pull if
you discovered you
were buried alive!

22. 22 May 30, 2018 22
 “Dead Ringer” 1868 Patent:
 US Patent No. 81,437
 Person pulls rope to ring
bell at top of tube that also
can include a ladder to
climb out of the coffin
 14 years earlier
 Not cited as prior art for
1882 patent
“Dead Ringer” Prior Art

23. 23 May 30, 2018 23
 Fearnaught 1882 Claim:
 A grave signal the essential
features whereof are
 a tube leading to the coffin
or casket,
 a signal-flag therein,
 a spring by which said signal-
flag may be forced vertically
upward above the top of said
tube, and
 means for releasing said
spring which may be
operated from the inside of
the coffin, substantially as
set forth.
Were Signal Flags Obvious Over Bells?
 1868 Dead Ringer Patent:
Now, should the person
laid in the coffin, on
returning life, desire to
ascend from the coffin
and the grave to the
surface, if too weak to
ascend by the ladder, he
can pull the cord in his
hand, and ring the bell,
giving the desired alarm
for help, and thus save
himself from premature
death, by being buried
alive.

24. Patent Strategies
24

25. Offensive Patent Strategies
25
 Protect Core Technology:
 Early generation filings seek broad coverage
 Later filings usually used for 3D photocopier protection
 Protect Future Product Development:
 Early filings should project into future avenues for
product & line extension developments
 Try to predict and cover future developments of both
you and your competitors
 Create Barriers to Entry:
 Portfolio mining and filing continuing applications
 Monitoring competitor patents for areas of overlap

26. 26
“Show Me the Money!”
May 30, 2018
26
 Purpose of Patents
 Provide an economic advantage
 To do so, claims must cover that
advantage
 Kinds of Patents
 Blocking Patents - completely exclude
 Shoving Patents - protect economic
advantage in a market
 Price of Patents
 Think – price of a car per country
 U.S. – $25K-$75K (attorney and PTO fees)
 OUS - $50K-$500K (depending upon
number of countries and translations)

27. 27
Blocking Patents
 The “Small Size” ICD patent
Claims ICD < 90 cc
Effective capacitance < 120 uF
For pectoral implantation
 Licensed to every ICD Mfg
Claims blocked others from
offering pectoral implants
 Claims allowed because -
Application told a “story” of a
claimed range that went
opposite to what prior art
taught
May 30, 2018
27

28. 28
Shoving Patents
 The “Insorb®” patents
To an absorable stapler
For SubQ stapling
 Prior SubQ Art – a spike, so
Claims to a bilateral fastener
Skin everted without overlap
Staple arms deform over time
 Claims don’t completely block
Other kinds of absorbable
staples may not infringe
But they don’t work as well
May 30, 2018
28

29. Domestic vs. Int’l Considerations
29
 Patent Rights are limited to a given country:
 Each country has its own laws, and
 Each country has its own patent attorneys
 There are no International Patents:
 PCT Application can buy an “option” on later filing of
patent applications in other countries
 EP Application allows for one examination, but patent
must be validated in each member country
 Timing and Costs:
 $5-10K/country for filing (more if translation needed)
 $10-50K/country for prosecution and annuity fees
 Typical 3-5 years for patent to issue
 Enforcements are highly variable

30. Defensive Patent Strategies
30
 Flexible Freedom to Operate Strategy:
 Consider market size and profitability
 One size doesn’t fit every situation
 Bigger/more profitable product lines may
require more comprehensive approaches
Monitor the Patent Poachers and Trolls:
 Be aware of patent issues among
competitors
 Be aware of trolls, especially in‘hot’ tech
areas
Consider Licensing to Assist Freedom:
 University and Gov’t Technology

31. 31
Current Trends for Patents
September 4, 2014
31

32. 32
32
Is There A Patent Troll Problem?
From PWC Patent Litigation Study
May 2016

33. 33
Is There a Patent Lawsuit Problem?
September 4, 2014
33

34. 34
U.S. Patents/Lawsuits: Related to GDP
September 4, 2014
34

35. 35
35
Exponential Technology/Information Growth
Exponential
Growth of
Computing for
110 Years
Moore's Law was
the fifth, not the
first, paradigm to
bring exponential
growth in
computing
Moore’s Law is only one example
CalculationsperSecondper$1000
Logarithmic Plot
Year

36. 36 September 4, 2014
36
The Singularity is Near
Life
Eucaryotic cells,
multicellularorganisms
Cambrian Explosion (body
plans) Reptiles
Class
Mammalia
Primates
SuperfamilyHominoidea
FamilyHominidae
Humanancestors walk
uprightGenus Homo, Homo
Erectus, specialized stone
toolsSpoken language
Homo sapiens
Homo sapiens sapiens
Art, early cities
Agriculture
Writing, wheel
City states
Printing, experimental
method
Industrial Revolution
Telephone, electricity,
radio Computer
Personal Computer
TimetoNextEvent(years)
COUNTDOWN TO THE SINGULARITY

37. 37 September 4, 2014
37
Linear vs. Exponential
https://www.youtube.com/wat
ch?v=e6mxIvIsRhQ&list=PLz-
xaNyC9s_qOksDIuC_pxyId9U0-
Cr7Z&index=1

38. 38 September 4, 2014
38
The Singularity is Here
https://www.youtube.com/wat
ch?v=i6Gl_wQxi80

40. 40 September 4, 2014
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Origin and Infropy
 Infropy (n) –
 The evolution of localized systems from lower to
higher states of order for a limited period of time,
 The yin of local order that enhances the yang of
systemic entropy,
 The reason why life exists and why it isn’t fair
The latest Prof. Langdon novel that
explores the relationship between
science and religion with some
interesting answers to the questions:
Why are we here, and
Where are we going?

41. The Future of Patents?
May 30, 2018
41

42. Why Do Humans Innovate?
September 4, 2014
42
Man is not the only animal
who labors, but he is the only
one who improves his
workmanship.
- Abraham Lincoln
US Patent No. 6949
Issued: 1849
Inventor: Abraham Lincoln

43. How Do Humans Innovate?
September 4, 2014
43
Performance
Taking a calculated risk with a new technology
platform by jumping early into a lower “S” curve
Time

44. Do We Need Patents in the Future?
September 4, 2014
44
 Do Patents Encourage Innovation?
Would innovation suffer without
patents?
 Patents Encourage Investing in Innovation
Patents Do Not encourage innovation –
humans are already predisposed to
innovate
Patents Do encourage investment in
commercializing innovation - “Adding
the fuel of fire to the genius of our
innovation” Abraham Lincoln
Until the Internet, patents also served
to codify human knowledge

45. Predictions for Patents:
Its All About AI
 5 Years – Computers will Improve the Patent System
Current trend is toward harmonization – Global Dossier
Common patent application forms – XML-based filings
Automated search/translation of “prior art”
 10-20+ Years – AI may Obsolete our current Patent System
“Person of Ordinary Skill in the Art” will become an AI
There won’t be anymore “unpredictable” arts
Distributed, not centralized, systems will prevail
September 4, 2014
45
https://www.youtube.com/watch?v=qjvhl3TjLjg
https://singularityhub.com/2015/01/26/ray-kurzweils-mind-boggling-predictions-
for-the-next-25-years/#sm.001vq3zdy14dacw5zk12c3b167q59

47. My Favorite Patent
September 4, 2014
47

48. Thank You!
About Brad Pedersen
Brad Pedersen is a patent attorney with more than 30 years of experience in patent law, engineering, business
and entrepreneurship. He is a partner and the chair of the patent practice group at Patterson Thuente
Pedersen, P.A., an intellectual property law firm in Minneapolis, Minnesota. Brad concentrates his practice
in the areas of high-technology, computer, software and medical device patent prosecution strategy,
licensing and litigation.
Brad can be reached at pedersen@ptslaw.com or (612) 349.5774
About Patterson Thuente IP
Patterson Thuente Pedersen, P.A. helps creative and inventive clients worldwide protect, and profit from, their
ideas. Practicing in the areas of patents, trademark, copyright, trade secrets, IP litigation, international IP
protection, licensing and post-grant proceedings, the firm’s attorneys excel at finding strategic solutions
to complex intellectual property matters.
Visit us online at www.ptslaw.com.
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