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South Texas College of Law Houston
Katz, Paul N.

Professor Paul Katz
Exam all MC
Open note/book

1. Introduction
a. Patent Act of 1790
i. Allows inventors to obtain patents on processes, machines, manufacturers &compositions of matter that are
1. Useful
2. Novel
3. Non-obvious
b. Codification of case law led to Patent Act of 1952
c. What is a patent?
i. Created by application that has been examined by a USPTO examiner that checks the patent claims who makes sure the claims are useful, novel and non obvious
ii. Goal: when patent is issued, it will be of something of value to everyone
iii. Check prior art to see if invention already exists
iv. Gives inventor extreme rights to impose on other people:
1. The right to exclude
a. Gives owner the right to exclude anyone from making, selling, offering for sale or importing into the country.
v. Each country has their own patent system
1. You have to file an obtain patents in every country that you want protection in
vi. Statements you make in a foreign application can be introduced when you apply in the US
vii. Before you file a lawsuit check:
1. Maintenance fees paid
2. Correct inventor
3. Verify client’s information
d. Patents – in depth
i. Patent is good for 20 years after filing date
ii. What rights does a patent give you?
1. Just right to exclude (negative), no right to practice your invention
iii. Parts of a patent:
1. Specification – Written description of the invention and of the manner & process of making and using it
2. Claims – most important part, this is what your invention is
a. Markmen hearing on scope of claims (interlocutory)
b. Jury will hear if there is infringement after Markmen hearing
iv. No right to any tangible thing; just says you can do something against someone else.
1. Doctrine of first sale – if you sell a product which normally infringe your patent claims, the buyer is free to resell/destroy it
a. Buyer can’t copy or rec

l inventor
3. Provisional application – enough information to convey concept of information, when used properly it allows you to establish an effective filing date when you send this application in.
a. So long as you file a provisional app within a year of filing the actual patent – you get the filing date of the provisional application
b. In order to get filing date when you mail it, it must be mailed via registered mail or electronically
i. Get the stamp that shows the date
c. If you have a foreign inventor who has his app in a foreign language.
i. In the US, you have to file a non-provisional app in English
ii. However, provisional can be in any language
Bad news – some inventors say they file a prov app and say they have a year before they have to worry about a non-prov