PATENTS FINAL OUTLINE
I. CHAPTER 1: ORIGINS AND POLICIES
Patents are very significant to the economy, especially as the majority of the assets of US corporations have become “intangible.” We allow a special exclusionary right for “inventions” because it creates incentives to innovate: (a) Incentive to invest; (b) Incentive to disclose; (c) Incentive to commercialize; (d) Incentive to design around.
(a) THE NEGATIVE RIGHT TO EXCLUDE: Under 35 U.S.C. §154(a)(1) (1994), an American patent confers on the patent holder “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.”
Does not grant a positive right to use. Patterson v. Kentucky (US 1878): May have a valid patent for an invention that it would be illegal to use. Nor may pharmaceutical patent holder sell drug without FDA approval.
(b) ADJUDICATORY FORUMS FOR PATENT MATTERS
1. U.S. District Courts: In accordance with 28 U.S.C. §1338, U.S. District Courts have original subject matter jurisdiction over cases “arising under” the patent laws.
2. U.S. Court of Appeals for the Federal Circuit: Exclusive nationwide appellate jurisdiction in cases where well-pleaded complaint states cause of action in patent law. Established in 1982 to create national uniformity.
A. Holmes Group (US 2002) says that a case where a patent claim is presented only as a counter-claim is appealable only to the geographic Circuit Court of Appeals, and not to the Federal Circuit.
3. USPTO Board of Patent Appeals and Interferences: Hears appeals from patent examiners’ decisions , including refusal to grant patents in ex parte patent examination or reexamination proceedings, or refusals to reissue patents, as well as appeals from examiner decision in inter partes reexamination proceedings and interferences.
A. Appeals go to Federal Circuit.
4. U.S. District Court for the District of Columbia: Claimants who lose either an interference or patent claim after a final decision of the USPTO may also file an appeal here, by filing a civil action against the Director of the Agency. Although more time-consuming and expensive than a direct appeal to the Federal Circuit, it has the advantage that the party may present new evidence in a trial de novo, rather than the Federal Circuit which rules “on the record.”
5. International Trade Commission: has patent jurisdiction over patent-related matter matters involving imports under §337 of the Tariff Act of 1930.
II. CHAPTER SEVEN: STATUTORY SUBJECT MATTER
(a) KINDS OF THINGS THAT MAY BE PATENTED
1. 35 U.S.C. 101: Four statutory classes: (1) processes; (2 )machines; (3) manufactures; or (4) compositions of matter.
2. Broadly Construed: Should “include anything under the sun that is made by man.” Chakrabarty (US 1980)
3. Nonpatenable Subject Matter. Diehr (US 1980): “laws of nature, natural phenomena, abstract ideas.”
(b) COMPUTER RELATED INVENTIONS AND BUSINESS METHODS: “PROCESS”
1. Gottschalk (US 1972): Questions whether software is a patentable “process.” Construed narrowly. Holding: a process claim directed to a numerical algorithm, as such, was not patentable because “the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” That would be tantamount to allowing a patent on an abstract idea.
2. Diehr (US 1981): Holds that a process for curing synthetic rubber which includes in several of its steps the use of a mathematical formula and a programmed digital computer is patentable subject matter under §101.
A. Contrast to Gottschalk: “the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber.”
B. Okay to Utilize Nonpatenable Subject Matter: “a claim drawn to subject matter otherwise statutory does not become non-statutory simply because it uses a mathematical formula, computer program, or digital computer.”
C. Claims Considered as a Whole: Not Constituent Parts.
3. Bilski (US 2010): Rejects method for “hedging “ risk in commodities trading by using a mathematical algorithm as not meeting §101 subject matter patentability. Claimed invention is not a “process” because it is an “abstract idea.”
A. Court Says Machine-or-Transformation is not Dispositive.
i. Test May Still Be Used, Just Not Dispositively: Court says that the machine-or-transformation test is a “useful and important tool” for determining whether a claimed invention is a “process” and “may provide a sufficient basis” for determing the patentability of inventions such as those of the “Industrial Age.” But test may not foreclose patentability of inventions of the “Information Age.”
B. No Dispositive Business Method Exception: Statutory construction forecloses blanket exception. Class of patents is suspect..
6. Cybersource Corp. (Fed. Cir 2011): Process for matching IP address to credit card information is not patentable.
A. “Mental Process” is a Subset of “Abstract Ideas”: “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas.” Limited holding because challenged “method [could] be performed without a machine.” Where this is not the case (such as where calculations could not be made without a GPS receiver), the mental processes bar would not necessarily be implicated.
(c) BIOTECHNOLOGY RELATED INVENTIONS: “MANUFACTURE” AND/OR “COMPOSITION OF MATTER”
1. Chakrabarty (US 1980): Bacterium created by a scientist to clean up oil spills is not barred as unpatentable subject matter, but rather meets §101 as a manufacture and/or composition of matter.
A. Court Defines “Manufacture”: “The production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” (Dictionary definition.)
B. Court Defines “Composition of Matter”: “All compositions of two or more substances and… all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, or powders or solids.”
C. Court Defines When Living Organism is Patentable: Claimed patent is patentable because, “claim is not a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter – a product of human ingenuity having a distinctive name, character [and] use.”
2. PTO’s Utility Guidelines: A gene as it exists in the human body is not subject to patent protection, but a gene “isolated from its natural state and processed through purifying steps that separate the gene from other molecules naturally associated with it” is eligible for patent protection under §101.
3. Assoc. for Molecular Pathology (Fed. Cir. 2011): The Federal Circuit upholds a patent claim for “isolated” DNA molecules, reversing a District Court’s holding that such claims are patent-ineligible products of nature under §101, because the molecules as claimed do not exist in nature.
A. Distinction Between a Product of Nature and Man-Made Invention under §101: “turns on a change in the claimed composition’s identity with what exists in nature.” Here the molecules are patentable because they are “markedly different” than the DNA f
and is usually made of the word “comprising,” meaning that the invention includes the listed elements but does not exclude others.
(3) Body: Includes a recitation of the elements: the steps or parts that make up the invention.
(e) EXAMINATION AND PROSECUTION
(1) Formalities and Search by the Examiner: Examiner first ascertains that application has the prerequisites for obtaining a filing date: (1) written description; (2) claim; and (3) any required drawings. Examiner checks that only one invention is being patented. Next, examiner conducts a search for prior art relevant to the claimed subject matter.
(2) Office Action: Initial activity undertaken by the examiner, one of two forms:
(A) Substantive Actions: Examiner can allow claims, rejects claims, object to claims, or object to the written description.
(B) Restriction Requirement and Election: Only one invention per patent. If examiner feels like there is more than one in application, will force inventor to elect one invention to go forward with.
(3) Applicant’s Response: Inventor has six months to respond to office action, or application is considered abandoned. May not offer new matter.
(4) Reconsideration and Allowance: If examiner is satisfied with the response, he issues a Notice of Allowance. Otherwise he may issue a second Office Action, which may be final.
(5) Responses to a Final Office Action: After a final rejection, the applicant has four choices: (1) abandon the application; (2) file an appeal with the Board of Patent Appeals and Interferences; (3) take allowed claims and cancel others; or (4) file a continuing application.
(A) Appeals: Has two months, extendable to seven months to file appeal brief. If the Board affirms the examiner’s decision, the applicant may: (1) abandon the application; (2) file a continuing application; (3) bring a civil action vis-à-vis the District Court for the District of Columbia under 35 U.S.C. §145, or (4) or appeal directly to the Federal Circuit under 35 U.S.C. §141. If reversed, examiner must issue Notice of Allowance.
(B) Cancellation of Claims: If some claims granted, the applicant may cancel the others and receive a Notice of Allowance.
(C) Continuing Applications: Generic term referring to three types of patent applications that are entitled to the filing date of an earlier application: 1. Continuation Applications; 2. Continuation-In-Part Applications; and 3. Divisional Applications.
(6) Publication: Most patent applications are published 18 months after earliest filing date, although there are exceptions.
(f) REEXAMINATION: 35 USC 301: Procedure whereby the patentee or a third party may request that the PTO reexamine any patent claim in view of cited prior art. Also, the Director may reexamine a patent on his own accord. A reexamination proceeding may either be ex parte or inter partes. The purpose of the reexamination statute is to strengthen “investor confidence in the certainty of patent rights by creating a system of administrative reexamination of doubtful patents.”
