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South Texas College of Law Houston
Shurn, Peter J.

a.      Requirements of patentability – adequately disclosed, new, non-obvious, useful, w/in a statutory class of patentable subject matter
b.      Patents are not a Constitutional right – Congress is simply able to grant patents
a.      §112 ¶1 – written description, enablement, and best mode
b.      §112 ¶2 – definiteness requirement
c.       Enablement
                                        i.            Inventor must set forth a specification w/sufficient information to enable a person skilled in the relevant art to make and use the claimed invention w/o undue experimentation
                                      ii.            In re Glass (CCPA 1974) pg 169 – sufficiency of disclosure should be judged at the time of the filing date
a.      Cannot use pending patents as evidence of enablement when those pending applications were not available to the public (note tension b/c those would count as prior art under §102(e))
                                    iii.            Biological deposits – when microorganisms are not readily available; does not have to be released to the public until patent is issued
                                    iv.            Patent does not have to teach what is already well known in the art
                                      v.            In re Hogan (CCPA 1977) pg 177 – PTO cannot use later art for §112 rejections; PTO cannot rely on later art to invalidate a patent for non-enablement b/c the patent did not sufficiently enable a later discovered entity that was covered by the earlier patent’s claims but not enabled by the written description
                                    vi.            Wands factors for undue experimentation
d.      Best Mode
                                        i.            Most countries do not have a best mode requirement
                                      ii.            2 part test for determination compliance w/best mode requirement
a.      Whether at the time the inventor filed the patent application, he knew of a mode of practicing the claimed invention that he considered to be better than any other
b.      Whether the disclosure is adequate to enable one skilled in the art to practice the best mode, or has the inventor ‘concealed’ his preferred mode from the public
                                    iii.            Glaxo v. Novopharm (Fed Cir 1995) pg 188 – knowledge of the patent agent’s or other employees of a best mode cannot be imputed to the inventor w/o other evidence – requirement only focuses on whether the inventor himself knows of a best mode
                                    iv.            Best mode is evaluated at the time of filing – later discovered best modes need not be added by amendment after filing date
                                      v.            Adequate disclosure of best mode
a.      Great Northern Corp v. Henry Molded Products (Fed Cir 1996) pg 200 – best mode requirement only applies to practicing the invention and not to ‘production details’ (commercial considerations such as equipment on hand or prior relationships w/suppliers and details which related to the quality or nature of the invention but which need not be disclosed b/c they are routine)
                                                                                              i.            First determine whether the detail in question was a production detail – then determine whether it was a routine detail known to those in the art so that a PHOSITA would still be enabled to practice the best mode
                                    vi.            Best mode does not require the public to be fully enabled to duplicate exactly the patentee’s preferred implementation of the invention
                                  vii.            Do not have to point out which is the best mode – can include many different modes as long as the best mode is included
e.       Written Description
                                        i.            Vas-Cath v. Mahurkar (Fed Cir 1991) pg 206 – written description must allow PHOSITA to recognize that the patentee had actually invented the claimed matter and was in possession of the invention at the filing date
                                      ii.            A specification that is adequate to support a claim to specific subject matter may also be adequate to support a broader claim which encompasses that specific subject matter depending on whether the specification taken as a whole sets out that specific subject matter to be an essential element of the invention or whether the specification indicates that the invention is of a much narrower scope
                                    iii.            Patent can enable more than it adequately describes (i.e. describes making a table w/four legs, but also enables one to make a table w/three legs)
                                    iv.            Fujikawa v. Wattanasin (Fed Cir 1996) pg 226 – Fujikawa wanted the PTO to rule that Wattanasin did not support Fujikawa’s sub-genus so that when they filed, PTO could not use Wattanasin as prior art
a.      Must enable people to identify the overall group but do not necessarily each individual member – however, if you identify the individual members, you must describe the distinction b/t members and non-members
f.       Definiteness

US/foreign country
Inventor/third party
Patented/described in printed publication
More than 1 yr before filing date
US/foreign country
Inventor/third party
Offered for sale, sold, or publicly used invention
More than 1 yr before filing date
Abandons invention
Patents invention
More than 1 yr before filing US application
Foreign country
Third party
Describes in an application that issues OR PCT application published in English
Filed before date of invention
US/foreign country
Derived invention from third party
Before date of invention
US/foreign country
Third party
Invented invention
Before date of invention
a.      Timely Application – Loss of Right
                                        i.            Public Use – §102(b)
a.      §102(b) – cannot obtain patent if invention was in public use for more than one year prior to filing date
b.      Egbert v. Lippman (SCt 1882) pg 342 – private use of a corset barred application – public use does not depend on the number of people to whom the invention in known
c.       Metallizing Engineering Co v. Kenyon Bearing (2nd Cir 1946) – use of a process to produce a product that was publicly sold more than one year prior to filing an application for the process acts as a statutory bar to the process
d.      Private use – must be under the inventor’s control and not for commercial purposes
                                      ii.            Experimental Use – defense to §102(b) statutory bar
a.      City of Elizabeth v. American Nicholson Pavement (SCt 187) pg 350 – when inventor remains in constant control of the invention and does not abandon the intent to obtain a patent, §102(b) will not bar the patent
b.      Lough v. Brunswick (Fed Cir 1996) pg 353 – where inventor did not keep any notes about prototypes, gave them to friends w/o soliciting comments about their use, did not keep secrecy agreements, and one prototype was eventually sold to a stranger, the use was public and not experimental