Patent Law Safrin Spring 2014
I Intro. – Class Discussion [1/13]
1. Areas that use Patent Lawyers
a. Civil litigators (looking for work)
b. Corporate Attorneys
i. License agreements
ii. Mergers and Acquisitions (intellectual property)
c. Patent Attorney – Prosecute
d. Entrepreneur / start-ups / small business
e. Health and pharm related
2. Oliver Evans – a great American inventor. [T. Jefferson letter – 8/13/1813]
a. Kinda patented the first elevator
b. Thomas Jefferson – Does he have the right to obstruct others in the use… of the elevator.
c. “Exclusive right” to use it.
d. Did he innovate or was he the first to invent it ?
e. Why give to the first inventor ? à don’t take knowledge away that people have.
f. T. Jeff finds many previous inventions that are very much like the elevator.
i. He is moving methodically through the prior art.
ii. If only the leather strap is new, then that should be the only thing that can be patented.
iii. He does seem to find the hooper-boy to be new.
g. Is this “New Enough”;
i. Change of form -> not a biggie.
ii. Change of use -> does not count (you can use for water, coal, dirt, etc…)
h. Is it useful?
i. Exclusive -> flames lit from another candle à can be used without diminishment!
i. Not quite true when it comes to creative arts…
3. Thomas Jeff did not really seem to like patents.
Patents must be; [1/15/14]
1. New (Novelty requirement)
a. First to market
b. Do not deprive something out there.
2. Non-obvious (have you invented ‘enough’) [Word came from 1952.]
a. To someone of similar skill, working in the same industry
b. NOT obvious to someone in light of what is already out there….
c. Changing the color would be considered obvious.
d. In Europe -> OBVIOUS -> “Does it reflect an inventive step?”
a. In Europe -> susceptible to industrial application.
4. Sought -> Filed for AND INVENTOR must disclose it.
a. The invention must be disclosed…!
5. Pennock v. Dialogue 1829
a. Releases invention (7 years before) filing for a patent.
b. He would have had 7 years PLUS 14 years of usage = 21 years, and infringed on those already using it.
c. Does not get one, because many people ‘copy’ it.
6. In Patent land, you get the right to exclude…
7. “The Congress shall have Power To promote the Progress of [literary] Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” –> From the Constitution.
a. Two powers given to congress:
i. Create a Patent System (shown above by underline)
ii. Create a Copyright system. (shown above by double underline)
8. Mickey mouse expire issue:
a. Another 20 years added to 70 for copyrights.
Patents must be; [1/16/14]
1. 1 – 1,000,000 took 100 years
2. To go from 5-6 million took 8 years
3. 6-7 million took 4 years
4. 8 million in US, in 2009; 466,000 patents filed.
a. Many foreign countries are now filing in US.
5. General all patents have;
a. Number patent
b. Inventor name
d. Foreign documents
e. Abstract – brief description, and/or what it does.
f. Background of inventor
h. Detailed description
6. America Invent act now allows companies to get patents (and not just the employee working for the company).
7. Look at the Patent on Page 21;
a. Difference already exist between general wheelbarrows
i. Special purposes wheelbarrows for bringing things
ii. Dumping – pivots
iii. Stability – large wheels
iv. Self leveling
b. Difference already exist between general wheelbarrows
c. The essense of the art: Claim too much or too little.
8. Intellectual property
a. Intangible – can’t touch this.
b. Very easy to copy (easy to copy story).
c. Very dependent on the law to protect.
d. The fence is a legal fence.
e. HEAVILY dependent on the law.
9. Ideas can not be patented -> implementation of the idea can; something practical.
10. Copyright and Patent, from Constitution
11. Trademark is original, and includes something more (money behind it)
12. Poster guy (Friend of Safrin’s) can
a. Patent (more powerful)
b. Copyright (it is code, but easy to copy)
c. Trade Secret (don’t tell anyone…)
d. Publish it
13. Trade Secret(2)
a. No fixed time (Coke is a TRADE SECRET -> no patent!) only 2 people know it
b. Databases, customer lists.
c. You are only liable (TORT) for taking a trade secret if you steal it, or take from a confidential manner, and the person TRIED to protect it.
d. FIRST: Must show it is a secret, and you try to keep secret!
e. SECOND: It is information worth money; commercial value.
f. THIRD: It was stolen.
14. How can a trade secret be taken:
a. Breach of confidentiality (express or implied) – Misappropriation.
b. Breach of a confidentiality agreement.
c. Obtained by improper means (stolen, fraud, lies, espio
5. § 101 -> Process, Machine, Manufacturer, Composition of Matter, Article of Manufacturer.
a. Composition of Matter = Pharma Patents
b. PRODUCT PATENTS = Machine / Manufacturer / Composition of matter.
i. These have product claims (Viagra for example)
c. = Process / Method.
6. Courts are struggling with the patents for Process;
7. Gottschalk v. Benson 1972 SCOTUS GATE KEEPER -> DO NOT ALLOW PATENTS FOR…
a. Invented algorithm to convert binary to computers.
b. Note: you do not bring Patent issues to state court.
i. NO SUCH THING as a state patent.
c. Some things can not be patented:
i. Phenomena of nature: Elements on periodic table
ii. Abstract ideas.
iii. Scientific proofs or natural laws: Math equations
i. Giving people too much, and
ii. Addresses the question if the person actually invented something
iii. Patent law only address the APPLICATION of the law to something.
e. Think about Bell and Morse (Samuel).
i. Morse was good, but tried to go way too broad on the final claim
ii. Morse is a patent pig, and Bell is a patent sweetheart.
f. At the TIME … this was seen as preventing patent protection for Software.
g. PTO for a while routinely rejected patents for computer applications.
8. Parker v. Flook (1978)
a. Much narrower than Gottschalk v. Benson, and ended up being granted..
b. Kept track of temperature vs. pressure, in a very automated way.
c. Again the SCOTUS says no..
d. HUGE: Now we have a dissent.
i. New justice “William Rehnquist”
ii. .. gathering steam…
9. Diamond v. Diehr (1981) (how long rubber should be in a mold)
a. Problem in cooking rubber to the right temperature.
b. PTO -> says NO, you can not patent this program
c. Stevens: Blistering dissent, should be treated the same as Flook .
d. Gets patent because you need to consider the invention AS A WHOLE, not just the formula -> consider the part that is an industrial process.