Patent Outline

Patent & Trade Secret Law Outline 2015

Introduction

a. Patents allow patentees (P) to exclude others from practicing invention during the patent term

b. Constitutional basis: Art 1. §8 cl8

c. Statutory basis: 35 U.S.C

d. Patents stand as counterpoints to trade secrets & provide an incentive to disclose inventions that might otherwise remain trade secrets

i. W/o patent protection, disclosing proprietary info destroys its value

ii. W/o patent protection, once potential buyers learn of info, they no longer have an incentive to pay for it (Arrow’s Paradox)

The U.S. PTO

a. Federal agency examining/issuing patents

b. Pre-filing

i. Through attorney or agent admitted for practice before PTO, or by inventor

ii. Prior art (PA) search to determine whether application meets patentability requirements, avoid waste from filing failed application + valuable info about claim breadth to avoid PA

c. Provisional & Non-Provisional Applications

i. Need not have claims & are therefore cheaper. But provisionals still need specification sufficient to support claims.

ii. Effective filing date as placeholder to preserve priority for 12 months. After which, the patentee must supplement filing w/ non-provisional application or else will be considered abandoned.

iii. Non-provisionals must meet all formal requirements & will be examined on the merits

d. Design patents

i. Protect the visual appearance of a functional product

ii. Cf. utility patent;

1. 14 years from grant cf. 20 years from filing

2. Both can cover same article, different features of the same device. E.g. visual appearance of Smartphone & utility patent for novel & nonobvious improvement of memory device inside

3. But trying to obtain design & utility patent for identical feature, e.g. ergonomic design problematic as utility patent may demonstrate that design functional rather than ornamental.

THE PATENT INSTRUMENT

a. Claims

i. Most important portion of patent; sets scope of right; “claim is name of game”

ii. Necessary in determining validity, enforceability, infringement & defenses

iii. Under peripheral claiming practice, patent “claims must be read in view of the specification, of which they are a part”

iv. Apparatus: directed to device’s structure. Infringement: whether structural limitations exist in accused apparatus. Device that incorporates all structural elements of apparatus claim infringe even though device is made by entirely different process even if function of the accused device is entirely different.

v. Method: series of steps to achieve result. Does not protect product, only process described in claim.

b. Limitations

i. Terms used in claim that defines invention

ii. E.g. limitations of process claim define steps or acts to be performed to recreate invention. If Y performs these steps, she has infringed.

iii. E.g. limitations in apparatus claim define physical structures or materials used to create invention. Y makes, uses, offers to sell, sells, or imports device w/ structure defined by claim infringes.

c. The Transition

i. “Comprising” claims: [Open] ABC- covers any embodiment having ABC, includes ABCD.

ii. “Consisting of” claims [Closed] ABS-covers only embodiments of ABC, excludes ABCD

iii. “Consisting essentially of” claims [In-Between] ABC-covers ABCD only if D does not make a variant essentially different from ABC.

d. Other types of claims

i. Product-by-Process Claims: protection production that defies description by any way except for manner in which product was made. Nascent arts with underdeveloped vocabulary to describe structural characteristics w/ words.

ii. Composition Claims: 2 or more combined things, made either chemically or mechanically. Protects claimed substance created by listed elements.

iii. Combination Claims: unites elements that are previously known in art, or combines previously known elements w/ novel elements. May be apparatus, process, composition or another type of claim.

ADJUDICATION OF PATENT DISPUTES WITHIN THE COURT SYSTEM

a. Federal Circuit (CAFC) formed in 1982 hears appeals from DC infringement actions to promote uniformity in patent cases. Jurisdiction based on subject matter rather than geography.

b. Last 20 yrs: Supreme Court (SCOTUS) asserting appellate jurisdiction over CAFC. Tug of war between specialist court specifically mandated to define direction of patent law, & highest court in the land.

Disclosure

1. §112(a): The specification must contain a written description & manner/process of making & using invention to enable PHOSITA to make & use invention.

a. Enablement (“Teaching”)- question of law

i. On a patent; on the bottom half (not within the box on the right hand side)

ii. Enablement centers of relationship between disclosure & claims

iii. For enablement, someone w/ the ordinary skill should be able to replicate the process

1. This is a subjective standard.

iv. P must describe invention clearly enough so that PHOSITA can understand it well enough to make & use it: Sitrik; Liebel-Flasheim

1. Sitrik v. Dreamworks (pg. 98)

a. Claims covered both the implementation in video games & movies. Patentee attempted to sue a movie company for doing something similar.

b. Question of whether PHOSITA could fill the gaps—they didn’t have the means to do it.

2. Liebel-Flasheim v. Medrad (pg. 99)

a. The specification itself noted that using this kind of jackless syringe was “impractical”

b. Issue: whether they can go back & change the specification, when they said they couldn’t do something

c. Point at which enablement is judged is the effective filing date. Once the patent is in then time freezes & everything is judged from then.

v. Description must be good enough so that no undue experimentation is needed

1. Not merely quantitative, considerable amount of experimentation permissible, if merely routine, or if specification provides guidance to direction in which experimentation should process: Wands (pg. 100: factors)

a. Quantity of experimentation necessary (success rate)

b. Amount of direction or guidance presented

i. Clear guidance, routine experiments

c. Presence or absence of working examples

i. Deposit to repository- Consider what is actually deposited à is this all antibodies for this target, or only this antibody (Explains Wands patentee arguments – wants all IgM, not just this IgM)

ii. Prophetic Examples- Future tense prediction of the outcome of current experimentation, even if it turns out to be correct.

d. Nature of the invention

e. State of the prior art

f. Relative skill of those in the art

g. Predictability or unpredictability of the art (#/success rate of examples)

h. Breadth of the claims

2. P can generally get protection for generic claims by providing one or a few enabling examples, given breadth of claims + complexity & unpredictability of technology at issue: Amgen (pg. 101: patenteee trying to claim ‘everything with four legs’)

vi. Later-developed documentation cannot be used to “fill in” info missing from the application when originally filed. Glass (pg. 103)

vii. P can capture implementations not envisioned at time of filing

1. Disclosure measured on effective filing date, scope of claim determined at time of infringement.

2. But if class subsequently expands to include other species not conceived at filing date, generic claim language will allow P to capture new species w/in scope of claim.

3. Enablement & enforcement: as long as the technology is enabled at the scope of disclosure then its okay.

viii. P must show PHOSITA would have recognized specification conveyed credible utility & not unproven hypothesis: Janssen (pg. 105)

1. Janssen Pharmaceutical N.V. v. Teva Pharmaceuticals

a. Enablement by citing to prior art

i. Papers using Gal. in animal models showing memory effects (No AD model)

ii. Papers using Gal. in humans demonstrating crosses BBB

b. Enablement- patentee in the process of animal model of AD experiment

c. Problem: Patentee argued not obvious from prior art, but needed prior art to prove enablement.

i. Study on animals that this improved memory but