Safrin: Patent Law: Fall 2010
7 Page Final Outline Required by Prof. Safrin
Patent law is strict liability- you don’t know you’re infringing, it doesn’t matter. 35 U.S.C. 101 et seq= Patent Act. USA- FTI not FTF. Not a race. Encourage disclosure-further technological advancement. Utility= not useful to society, just works in general and is new/non-obv. Sec 112- enablement-most common challenge. Patents- general exception to general prohibition on monopolies. Novel, Useful, Non-Obv, Disclose in app, 20 years from filing, 17-18 from grant. Right to exclude, not use. Claim section is what you own. Patent, Trade Secret, or Publish. Secret- must had commercial value, take reasonable and necessary steps to protect.
E.I. DuPont deNemours Co. v. Christoher- legal means of obtaining a secret may still be improper and thus a misappropriation of a trade secret, punishable by law. Cost of protecting secret vs. possibility of espionage. Intent and purpose.
Patent Eligibility- Diamond v. Chakrabarty- 35USCS101- New and useful. “Manufacture.” Natural phenomena are not patentable, but a live-artificially engineered microorganism is.
Lab Corp of America holdings v. Metabolite Labs- Homocysteine=low levels of vit B. New correlations discovered=patentable even though relationship existed in nature, unknown.
Gottchalk v. Benson- New math formula- patent for use in comps or by humans in general? Cannot patent formula for EVERY use in a comp- like patenting magnetism in general instead of how Morse did in his telegraph.
Diamond v. Diehr- Application of a math formula or natural phen. to a known process may be deserving of patent (improvement/new process). Claiming the process for curing rubber, not the math formula. Transforms rubber into a diff state/thing.
In re Bilski- Manipulation of an abstract idea. Not tech arts. Must use machine- transformation test. Majority- m/t test is “clue.” Mayer- tech standard. SC- test helps to decide if patent claim is for “abstract idea” but not the sole test. People list use of comp first, to avoid this for comp program patents. Dissent- what about other requirements of patentability? No patents for abstract ideas.
Lowell v. Lewis- Cannot patent frivolous, injurious, or immoral things. Invention is patentable if it serves no purpose, but is different and it works (water pump). Disclose so they can serve as building blows for future. Invention may even be worse than previous.
Juicy Whip Inc. v. Orange Bang- Just because customers are deceived does not mean there is no utility/injurious/immoral. Deceptive is not unpatentable. PTO not resp for protecting consumers.
Brenner v. Manson- Utility. Steroid tested on mice- something similar to invention works, not sure if invention works. Not enough-small changes can alter in a big way (pharm). Inhibits investigation giving them a patent that may/may not work. Cannot patent something only good for research. Not a hunting license. Cant even patent process.
In re Fisher- EST’s were objects of mere testing and not patentable. Just hypotheticals.
Titanium Metals v. Banner- Russian article described invention (alloy) , but did not disclose how to make it. One skilled in art could figure. Articles did not know it was corrosion-resistant, but it was. Should have patented a use of It, not the alloy. Article anticipated the range of metals used, so even if that feature was unknown, it was anticipated. Compound out there- not novel. Single prior reference must disclose it to bar.
35USCS102-Novelty.Schering Corp. v. Geneva Pharmaceuticals- Prior patent covered Claratin. Claratin causes DCL to be made in body. New patent for DCL would make all uses of the generics illegal ‘cause they will create DCL. DCL not mentioned in prior patent, but also not novel. It is naturally flowing. Stems from another patented activity- not patentable. Could patent DCL in isolated form, not in the body.
102(b)- in (a) someone else was using the invention or disclosed it. In (b) use in US up to a year by ANYONE bars patent- statutory bar. A- pure novel. B- stat bar- shoot in foot. Want to promote early disclosure, and not remove from public domain.
102(f)- you must be the inventor, cant steal ideas (foreign or domestic).
Egbert v. Lipman- Corset spring case. Sold or given to person to use unconditionally and not sworn to secrecy=public use. Even if very nature of invention is to be hidden (corset). Nichols case- rubix cube- showed friends. No attempt to extent monopoly. Does it attempt to extend a patent term by exploiting for more than 1 year?
Metallizing Engineering co. v. Kenyon Bearing & Auto Parts- Process used secretly for a year prior to filing date. Used in secret BUT FOR COMMERCIAL gain= in public use. Someone else could have patented it- trade secret- novel to them. Diff in Euro/Jap.
If you write article disclosing to public, you have 1 year to patent it. Nobody else can.
Experimental-City of Elizabeth v. American Nicholson Pavement- Process used for 6 years on public road. Not public use because experiment required this use in order to be created. Public Use=Commercial use for profit. Not sharing how to make. No other way to test- if there was they would shoot yo
nded use. More tinkering may be needed, but doesn’t mean it isn’t RTP.
Diligence- Gould v. Schawlow- Both use filing dates as RTP dates so later RTP must show earlier conception and diligence. Inventor must account for entire period between conception and rtp. Gould showed no particular activity for a period of time, and thus loses. Wont be penalized for limited resources, but must devote those resources reasonable and diligently. Don’t have to give up livelihood, but must work. Burden on first inventor to show diligence. 102(g)(2)- can use foreign activity to show diligence/GET A PATENT FOR YOURSELF, not defeat someone else’s patent.
Woodland Trust v. Flowertree Nursery Inc- Start using system again as patent comes up. Uncorroborated testimony of interested parties will not provide clear and convincing evidence to defeat a patent for prior use. Criteria for corroboration-1. Relationship between witnesses and prior user, 2. Time period between event and trial, 3. Interest of the witnesses in the subject matter, 4, contradictions in testimonies, 5, how detailed the testimony, 6 witnesses’ familiarity with the patented subject matter, probability prior use occurred, and impact of invention on industry. Invoices and pictures woulda helped.
Concealment/Suppression- Apotex USA v. Merck Inc- Apotex has patent for process, says Merck created process and concealed it and used it (trade secret). Merck has burden of showing they were first inventor, and if Apotex wants to keep their patent they have burden of showing concealment. Prior art helped figure how to make pill. 102(g)(2)- cannot defeat a patent using overseas activities (only to show diligence). Merck patented the product, not the process, and trial in Canada disclosed the process and therefore nobody gets the patent. Merck sued for making the pill, Apotex countered for process. One single publication is necessary, and in some cases an ingredient list enables process. Open court in Canada, not closed court, helps.
102(g)(2)- another invented and did no abandon/conceal, before you invented, in the U.S.