Jan 13, 2009
I. ORIGINS AND POLICIES
Objective of the Patent System: it is an incentive based system
1. Encourage innovation (invest time, money, labor)
2. Encourage public disclosure of creations
3. Encourage investment in commercial inventions
4. Encourage others to try to design around and provide better products
Monopoly is not illegal – only illegal means to attain monopoly and/or illegal use of monopoly are illegal.
Patent application prosecution takes about 3 years. Whatever it costs you to file budget that amount to prosecute.
Patents are Federal law – all federal law is statutory – which comes from Congress – which gets it powers to make laws from the United States Constitution.
The Congress shall have the power to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” Article 1 Section 8 C1.8.
Rights afforded by Patent: it is the right to exclude others from using, making, selling, offering for sale or importing. The rights are limited in time, are anti-competitive and are Personal Property.
In 1982, the United States Court of Appeals for the Federal Circuit (Federal Circuit) was created as the thirteenth federal court of appeals with exclusive jurisdiction over patent litigation and some other subject matters.
II. OBTAINING THE PATENT GRANT
As of June 8, 1995, the patent term starts when it issues and expires 20 years from the date of filing however it does not start till it issues.
35 USC §112 SPECIFICATION: Disclosure Requirements
1. Written Description (of the invention, and
a. Enablement Requirement: the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any PersonSkilledInTheArt (PSITA) to make and use the same and
b. Best Mode Requirement
2. Particular and Distinct Claim(s) ( one sentence covering the metes and bounds of what you want)
Mechanics of Prosecution
a. Preparation of Applications
b. Provisional Applications
c. Examination of applications
Jan 15, 2009
Procedures in PTO
Initial Processing of Application
Publication (18 months after application)
Examination and Prosecution
i. Formalities and search by the examiner (once filed cannot change subject matter + search for prior art by exmnr)
1. Each application is assigned to the appropriate art. And that person determines if it has the necessary elements:
a. written description
b. claim
c. any required drawing
ii. Office Action (>95% of time a rejection)
1. The communication in writing back from the examiner to the application.
iii. Applicant’s Response
1. Generally have 90 days max 180 days else higher fees..
iv. Reconsideration for Allowance
1. If the examiner is satisfied with the response he issues a notice of allowance to inform the applicant of allowance of the application.
v. Responses to Final Office Action.
1. Abandon the application
2. Take allowed claims and cancel others
3. File a continuing application:
a. Continuing prosecution application: allows the awarding the constructive filing date of a qualifying predecessor application. Elements
i. Expressly refers to the prior application
ii. Be filed prior to the patent issuing, abandonment, or termination of proceedings of the prior application.
iii. Identify at least one inventor included in the prior application
iv. Consist of the same written description as the prior application, with no new subject matter added.
b. Request for Continued Examination.
c. Continuation-in-part is an application that has some subject matter in common with the parent but also has new subject matter. ( old subject matter has the old filing date and the new subject matter has new filing date).
d. Divisional application: if the original filing has multiple inventions, when it comes back from the examiner then split them. It is a continuing application that is based on a parent application and has the same written description except that the claims are now separated out, usually because of a restriction requirement.
4. Petition and Appeal
a. Appeal to the Board of Appeals and Interferences (panel of 3) – the executive branch
b. Appeal to the Judicial Branch
i. Court of Appeals of the Federal Circuit (CAFC)
ii. District Court of DC (can add more evidence than just the file) De Novo so it is a new trial
1. Then go back to the Court of Appeals for the Federal Circuit (CAFC)
iii. Losing party may file for certiorari to the SCOTUS
vi. Publication: each application for a patent shall be published promptly after the expiration period of 18 months from the earliest filing date.
1. Exceptions to publication
a. Abandonment
b. Request- no foreign filing
c. Rescission – subsequent foreign filing
vii. Filing in other Countries: if you first file in the US and then file in another country within one year then you have the same effective filing date. There are patent Co-Op treaties under which in a single application you may designate how many/which countries you are filing. This will do an international search. In some countries you have to pay annuities to keep the application alive and in a lot of countries you have to pay annuities to keep your patent alive.
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Inventorship: A patent application ordinarily must be made or authorized to be made by the inventor.
joint inventors: have to have contributed to the conception of the invention. can be a joint inventor even though:
i. they did not physically work together or at the same time.
ii. each did not make the same type or amount of contribution
iii. each did not make a contribution to the subject matter of every claim of the patent.
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Available Post Issuance PTO Proceedings: After the issuance of the patent, the PTO loses its plenary jurisdiction to determine patentability. Once the patent issues then the executive branch no longer has a say. However there are 4 exceptions that you have to plead as affirmative defenses:
1. Certificate of Correction: 35 USC §254, 255 (PTO errors corrected at no cost and minor typographical, good-faith errors by applicant corrected for small fee).
2. Disclaimer: 35 USC §253 (if there was an invalid claim without deceptive intention, you may get rid of it without changing the other claims ).
3. Reissue: 35 USC §251,252 (may be even broader except for intervening ‘equitable’ allowance).
4. Reexamination: 35 USC §301-305: (anyone can request and can be ex-parte or inter-parte).
Jan 20, 2009
1. Reissue: allows the patent owner to correct an inadvertent mistake: not limited in scope as the others §251
Requirements: patent is deemed partly or wholly defective and inoperative or invalid because of defect in the specifications, drawings, or because the patentee has claimed more or less than he is entitled and the defect was
i. Unintentional or unavoidable
ii. Without deceptive intent.
broadening reissue (arising out of and supported by the matter already introduced)
i. Need to satisfy the following conditions:
1. That it shall be for the same invention as the original patent, as such invention appears from the specification and claims of such original;
2. 2 year rule: That due diligence must be exercised in discovering the mistake in the original patent, and that, if it be sought for the purpose of enlarging the claim, the lapse of two years will ordinarily, though not always, be treated as evidence of an abandonment of the new matter to the public to t
nd and to be heard.
III. DISCLOSURE REQUIREMENTS
What is an Inventions? 35 USC §101
1. a machine
2. article of manufacture
3. composition
4. manner/method
Criteria:
1. useful
2. new/novel – as opposed to anything known prior to invention
3. non-obvious – to person of ordinary skill in the art (POSITA)
Patent office must review based on the level of skill on the date of filing.
Test for did they disclose the technology best known to the inventor? Consider 3 things
1. Did they describe the claim i.e was it enabled? You take the objective standard & Clear and Convincing evidence
2. But when you go to the Best Mode question you include the subjective and the objective
a. Subjective: best known method to inventor; using preponderance of evidence; then
b. Objective: you take a closer look to see if there is enough information to practice the Best Mode; What is the std of evidence here?
Enablement:
1. Historical and Policy Underpinnings: Central Claiming vs. Peripheral Claiming
a. O’Reilly v. Morse (1853) {every improvement where motive power of the electric or galvanic current, and the result is the making or printing intelligible character, signs, or letters at a distance}. Here the court found this to be too broad as it did not limit itself to any particular machine, article of manufacture, composition or manner/method.
2. State of Art at the time of filing, Undue Experimentation, and Claim Scope
a. In Re Glass (CCPA 1974){patent claim for making whiskers was rejected on all claims due to defective ‘enabling’ and ‘best mode’}[prior art that was unknown at the time of patent application but later disclosed may not qualify as information known to POSITA in the field. Here, there some pending patent applications at the time of P’s patent application that later disclosed information. An application that is as yet not granted is treated as “secret prior art”.]
b. In Re Hogan (CCPA 1977) {patent claim #14 was rejected based on the prior art}[patent applicant filed a continuation in part in which a claim was added based on new subject matter and therefore the prior art was all prior art disclosed on the date of filing that continuation as opposed to the original filing date].
Jan 22, 2009
Best Mode [§112 requires best mode as “contemplated by the inventor.” A best mode attack will fail absent evidence that the inventor knew at the time of application of a best mode and yet concealed it.]
1. Subjective Inventor Preference of Best Mode on Filing Date {question will generally come up at litigation}
a. Glaxo v. Novapharm (Fed. Cir. 1995) {although Glaxo the assignee was aware of the a better technology the best mode disclosed in the patent application was the best mode known to the inventor and therefore the patent was not invalid}
2. Adequate Disclosure: The second prong
a. Great Northern Corp. v. Henry Molded Products (Fed. Cir. 1996) {there were paper pulp support beams. They find that they collapse if they did not have diamonds. The diamonds were part of the invention but were not in the claim description}
