Patent Law
I. History of patent systems. 1
II. Fundamentals of Patent Law (Needle’s Presentation)2
III. Architecture of a Modern Patent6
IV. Process of Drafting Patent Claims. 8
V. Applying for a Patent10
VI. US Patent System… 12
VII. Technology Transfer13
VIII. Patentable Subject Matter, 35 usc §101. 13
IX. The Utility Requirement, 35 u.s.c. §101. 16
X. Disclosure and Enablement , 35 u.s.c. §112. 18
XI. §102 Novelty Requirement (non-obvious)22
XII. §103: Non-obviousness Requirement – Prior Art and Other References. 29
XIII. Statutory Bars. 33
XIV. Infringement34
XV. Indirect Infringement40
XVI. Patent Licensing. 41
XVII. Client Issues. 44
Exam Format:
Short questions, definitions, fact pattern – closed book
I. History of patent systems
A. Venetian Act 1474
1) Requirements: useful, operational, registered with a government office, not previously made (novelty), fixed term and procedures dealing with infringement
B. British system
1) Began calling it a patent at this time
2) Royal grants of an invention from the sovereign
3) Grants could be either open or closed
4) Recognized by statute of monopolies – term 14 years for new manufacturers within the realm
C. Late 17th Century – Industrial Revolution:
1) Required to describe the patent clearly and completely – shifted the emphasis from new products to that of new and useful information [written description precursor], allowing others to improve upon that disclosure
2) Colonies granted patents – then conflicts arose with regard to whose patent in which state was enforceable
3) 1789 @ Constitutional Convention – created the national patent system Const. Art. 1 §8 cl. 8
a. At this time useful art divided off into copyright
4) Constitution -> Patent Act of 1790
a. Required examination for novelty and utility
b. 3 person panel reviewed
5) 1836 return to requiring examination
a. 1836 created the PTO
b. Commission on patents
c. Design patents added 1842
6) Patent Act of 1870
a. Requirement that there be claims
b. At this time they realized that the claim was as important or more important than the description
7) Patent Act of 1952
a. Obviousness requirement (was case law for a long time before this)
b. Created section recognizing
8) 1982 Fed Ct Circuit Appeals = jurisdiction over patents
9) 1999 Inventors Protection Act of 1989
a. Publication of 18 month patent application
b. Puts us on par with foreign countries that also examine and publication
c. BUT did NOT include the ability for someone to challenge a pending patent application (as is available for foreign patents)
10) Next expected revision
a. US to move to a first to file vs. a first to invent (as is now)
b. Disclosures will be very limited if this is adopted
II. Fundamentals of Patent Law (Needle’s Presentation)
A. Websites:
1) Patents and Trademarks Office: www.uspto.gov
2) Patent Fetcher: www.patentfetcher.com/fetchpatent.php
3) Copyright Office: www.loc.gov/copyright
B. Patentability: Sup Ct holds that “anything under the sun that is made by man” is patentable; Diamond v. Chakrabarty, 447 US 303 (1980)
C. Patentability Test:
1) Usefulness/Utility: 35 USC §101 – does the invention actually do anything, if so, does it solve the problem it is designed to solve
a. Compounds: You cannot get a patent on a compound unless it has a utility; but for an old compound being used in a new way… then you get a patent on its new application
2) Novelty: 35 USC §102 – Is the claimed invention disclosed anywhere in the prior art?
b. Prior patents/publications
c. Prior Public Use
d. Prior Commercial Offers to Sell
e. Prior Sales
3) Non-obviousness: 35 USC §103 – Even if new and novel, would the claimed invention have been obvious to one skilled in the art at the time of the invention?
f. Such as cannot claim hindsight
g. This is the hardest test to overcome
D. RULES BARRING PATENTABILITY:
1) One-Year Statutory Bar Rule: Right to patent an invention if there is a public disclosure of your invention more than 1 year prior to filing a patent application
h. Once the year has past, then the invention is considered to be in the public domain
i. BEST WAY TO DO THIS: File in the US, this protects you world wide (Patent Cooperation Treaty); if you have published, then you may have damaged your right to file in other countries
2) Do not do the following before evaluating whether or not patent pr
4 years from issuance for a design patent
1. I make a widget B which is dependent on A’s widget
i. When I get a patent on B, that only precludes A from making it
ii. We would have to cross-license each other’s technology
2) Rights Granted: Owners of patents have the right to “exclude others” from
a. Making, using, selling, offering, or importing the invention
b. This is not the right TO make something, but to KEEP OTHERS FROM making something
1. Because of 3rd party improvements – improvement patents
3) Invention = Conception + Reduction to Practice [in the USA]
a. These two steps do not often happen at the same time
1. What is conception of the idea? There must be a complete formulation of how to carry out that idea – if you do not possess the knowledge to carry out the invention to making it – then you are not considered the inventor
i. If you tell someone skilled in the art about the conception – they should be able to reduce it to practice with basic skill without undue experimentation (then at that time in the US is when it becomes an invention)
ii. Computer simulation of a rocket is not considered actual reduction to practice see also Timing of Invention/Priority
iii. The date will matter most when someone is filing an interference
iv. The record of the conception may be corroborated via documentation that has been witnessed by someone who is not a co-inventor yet who understood the invention
2. Law firms often create record of invention forms so that inventors can document the details – who contributed to the invention
3. Reduction to Practice: commercial viability is not dispositive as to whether something has been reduced to practice – it depends more on whether a business person would invest in making the invention commercially viable
