MENELL_INTROIP_SPRING2015
Patents
I. Policy
A. Promote invention, progress: Incentivize with money/exclusivity rights
II. Subject Matter
A. Any process, machine, manufacture, or composition of matter
B. Controversial categories
1. Laws of nature
a. Can’t patent all forms of long distance communication. O’Reilly (Telegraph case)
b. Can patent a mode of applying law of nature. Furnace case.
c. Advanced mixing/packaging cannot be patented unless there is an inventive application. Funk Bros. Seed Co.
i. Written but Douglas who hated monopolies (known as trust buster). Made up the “incentive application” requirement.
ii. Must be more than saying “apply it.”
2. Abstract Ideas
a. Can’t patent al algorithm that just does the work for you unless you do something more with it after. There must be some application. Parker (alarm clock case). Binary conversion case.
b. Business method
i. Business methods go through the machine or transformation test.
· It must be tied to an actual specific machine OR
· Transformation of legal obligations or relationships, business risks, or other abstractions are not physical
ii. But not totally strict adherence to the test.
iii. Emphasis the issue is preventing patents on abstract concepts that would preempt entire areas of endeavor
· In Bilski, unpatentable because it could be reduced to an algorithm and there was no more insignificant post-solution activity.
3. Living organisms
a. Human-made bacterium not found in nature is patentable. Diamond v. Chakrabarty.
b. Naturally occurring DNA segment is not patentable. Myriad.
c. Court refused to grant patent for correlating ad rug with metabolite levels. Mayo.
III. Utility § 101
A. Unsuccessful Inventions
1. Credible Utility: Whether a POSITA would accept that the invention is currently available for its purported use
a. Can’t have be in perpetual motion
2. Specific and Substantial Utility: Particular practical purpose
a. Specific:
b. Substantial: Real world use
B. Chemical Inventions: Check spectrum for how far along it is on the results chart.
1. Criteria Spectrum
a. New compound
b. High biological activity
c. Structural similarity to useful products (starts somewhere here)
d. Reasonable correlation between results and utility
e. Results in animals
f. Results in humans
2. Process inventions must yield a useful product
C. Biotechnology
1. Specific: More than a random fragment of acid
2. Substantial: Real world use
3. Credible: Whether POSITA would accept the invention as currently available for use
D. Questionable social benefits
1. PTO in the business of patents, not regulating morality.
IV. Novelty § 102. 1952 Act: One year grace period from date of investment (lightbulb going off)
A. § 102(a): Prior to application either: Publicly known or used by others in US OR Print publication (which enables) in US or foreign country
1. If you don’t publish, but keep using it (outside of experimentation), you can bar yourself. Rosaire oil drilling case.
2. You can “swear behind” (affidavit that the inventions was some time before publication)
3. Prior Art must meet all of the elements (make claim chart) to anticipate.
a. A prior patent that embodies a range can invalidate a patent.
b. Inherency: Soap scum in boats but it was not understood/used.
B. § 102(b): Patented or described in a printed publication in US or foreign country OR on sale in US more than one year prior to application
1. Printed publication is pretty broad, a PHD thesis might anticipate from the date of publication.
a. Private letters that are meant to be confidential or trade secrets probably not.
i. Unless it looks like you’re disclosing
2. On sale: Barred if it is the subject of an offer for sale if the thing is ready for patenting
a. But an advertisement/data sheets to prospective buyers does not count (unless it enables)
3. Public: is broad. Corset case.
C. Exceptions
1. Experimental use: Can’t feasibly be tested in private. But only for reducing to practice, not for refinement.
D. § 102(c): Abandoned the invention: Based on intent, express or implied from a long unexcused delay in filing.
1. Tesla says their patents are “dedicated to the public” but does this mean abandoned?
E. § 102(d): Foreign Patent: If filed overseas, must apply in US within 1 year or it will be invalid (foreign entity must actually issue as well)
F. § 102(e): Filed by another beforehand (but not issued yet). When issued, you would lose because we use the date of application.
G. § 102(f): Derivation: You stole it from someone else. COMPLETE CONCEPTION must be conveyed. If you invent on your own after someone else abandoned, that’s cool.
H. 102(g): Generally, the person who first reduced to practice gets priority UNLESS
1. Unless another inventor had an earlier conception and reasonable diligence to attempt to reduce to practice (and didn’t abandon, suppress or conceal).
a. Reduction to practice means building a model or making a drawing (actual) or filing an enabling patent application (constructive).
b. Reasonable diligence:
i. Need to develop a closely related invention to test primary invention
ii. Lab burns down
iii. Serious illness
iv. Invalid reasons
· Vacation
· Insufficient funding
· Company relocates
I. American Invents Act (March 16, 2013): First to file
1. Prior art is established as of effective filing date.
2. You get one year grace period from the date of filing
3. Patent, publication, public use, or sale anywhere will bar a patent (unless you disclosure before them but within the grace period)
V. Non-Obviousness § 103: Patent barred if would have been obvious to a PHOSITA
A. “Would a skilled artisan, faced with the same problem, and with no knowledge of the patent, selected the patented segments to combine?
1. We look at the prior art and see if the incremental step would have been obvious to a PHOSITA.
a. Must avoid using hindsight and “obvious to try”
b. Often, the invention is actually figuring out and solving a problem but we don’t know what the problem is prior to invention.
c. Different spheres are fine. (Dentistry polish made from floor polish). Though the court lean more towards the problem solving of the nature of the problem.
d. Some degree of closeness.
2. Factual Factors
a. Scope and content of prior art
b. Difference between prior art and claimed invention
c. Level of OSITA
3. Graham (tractor case) Secondary Considerations
a. Long-felt but unsolved need
b. Commercial success
c. Failed efforts of others
d. Copying by others
e. Praise for the invention
f. Unexpected results (going against conventional wisdom)
g. Disbelief of experts
4. Combined: Motivation to combine
a. Nature of the problem to be solved
b. Teachings of the prior art
c. Knowledge of PHOSITA
5. “Would a PHOSITA have come up with this invention?” Viewed through the scope from the day before the invention
a. Teaching, Motivation, Suggestion (TSM) test helps but there’s other ways to find obviousness.
B. AIA changes it to before the effective filing date (rather than when the invention was made)
VI. Disclosure Requirements § 112
A. Quid pro quo: You get the right of exclusion but you must give the public something valuable.
B. Requirements
1. Written description: What?
2. Enablement: How?
3. Best mode (AIA says this is subjective but can’t be invalidated on this prong): Particular choices to produce.
C. Enablement: Whether a PHOSITA would be required to engage in undue experimentation in order to make and use the invention.
1. Factors
a. Quantity of experimentation necessary
b. Amount of direction or guidance presented
c. Presence or absence of working examples
d. Nature of the invention
e. State of prior art at time of filing
f. Relative skill of those in the art
g. Predictability or unpredictability of the art
h. Breadth of claims – reasonable correlation
i. M: Don’t hide the secret sauce or you put yourself at risk
D. Written description: Everything inventor adequately describes to allow PHOSITA to recognize that the inventor invented what is claimed.
1. Can only claim what is both described and enabled.
2. Anti-Gun jumping principle: You can’t claim more than what you describe.
E. § 112(b) Claims: Must claim with degree of particularity (“Particularly pointing out and distinctly claiming…”). Must be reasonable certainty so that people can figure out the boundaries.
1. Breadth of claim
a. If you claim a broad subject matter (e.g., all use of “fibrous and textile materials” as lightbulb filaments), the subject matter must all share the characteristic you discover. If they don’t (if it turns out only a few fibrous materials are useful as lightbulb filaments), you may not claim the broad range of materials. (Incandescent Lamp)
b. Put another way, if you claim a single working example, you can’t claim an extremely broad range of products
2. Product-by-process claims
a. Covers a product, but claims product by describing product used to make it. Often used where inventor can’t fully described product (as in drug patent)
b. Unclear whether claim reads onto same product made through a different process
3. Means-plus-function claims § 112(f)
a. Claim expresses an elt as a means for performing a function, rather than reciting specific structure material, or acts
i. Written description must describe something that can act as such a means
ii. Ex: claim as combination an invention consisting of a novel microprocessor along w/ “means for inputting data to be processed.” The “means” could be a keyboard, a hard drive, etc
iii. MEANS must be described in specification. You are limited to what you specifiy.
· New technology does not fall under § 112(f), only pre-existing technology.
iv. The means are considered part of the claim — an accused device that doesn’t have those means doesn’t infringe
b. The words you use are very important
4. Essential element doctrine (Gentry Gallery)
a. If some claim is an ESSENTIAL ELEMENT of your claim (i.e., a distinguishing feature), you’re limited to that claim — you can’t claim a broad range of equivs
b. In Gentry Gallery, it was sofa controls on “fixed console.” D, however, had console on moving console. Gentry had made a big deal during prosecution about how critical it was that the controls were on the “fixed console”
VII. Infringement
A. Rights
1. Right to exclude others from making, using offering to sell, or selling the patented invention within the US or importing the patented invention into the US.
2. Right to license, assign, and transfer interest.
3. Patent term is 20 years from the date of filing (although it might take 3 years to issue. It will be published in 18 months.)
may not get efficient behavior if we let them do it on their own
3. Cons
a. Dis-incentivizes to licenses à hold out problem? Efficient results?
i. Parties may not know value of tech
ii. Significant transx cost associated w/ licensing
iii. Strategic behavior à parties forgo some deals that would be in the best interest of both sides
b. Transx cost block invention in next generation
c. Litigation = proof of high transaction costs
4. Afraid of patent trolls
5.
6. Compulsory License in extraordinary circumstances
a. Substantial injury to the public interest
b. Detriment to infringer/public outweighs harm to patent owner
c. Monetary damages adequately compensate the patent owner
C. Damages
1. Attorneys fees in exceptional cases
2. Court’s discretion Factors (sometimes up to treble dmgs)
a. Willfulness, actual knowledge or willful blindness
b. Egregiousness of conduct based on totality of circumstances
3. Lost Profits
a. Divert Sales: P must show that there is a reasonable probability he would have made sales
i. Demand for the product
ii. Absent noninfringing alternatives
iii. Manufacturing capability
iv. Profit
b. Price Erosion
c. Increased Costs ( to deal with infringers)
d. Convoyed Sales (I didn’t get to sell repairs/replacement parts
i. A functional relationship must be established.
4. Reasonable Royalty: What you already licensed for or what you hypothetically would have gotten
a. Requires econ experts and can get squishy. Daubert to show if expert is qualified.
b. Figure out smallest Saleable Patent Practicing Unit (gives a small base) but then you can use a larger rate
i. Just the part of a chip rather than the whole motherboard/computer.
ii. Market science based on survey economics to assign value.
5. FRAND: Standardized/interoperable stuff that requires licenses to work together. Prevent hold up so encourage adoption of the standards.
XI. Design Patents: Form that makes function accessible (iPad shape). Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefore, subject to the conditions and requirements of this title.
A. Requirements
1. Novelty: Does the prior art show same design as a whole to the ordinary observer?
2. Non-Obviousness: Judged by “designer of ordinary capability who designs articles of the type presented”
3. Ornamentality: the design must not be governed solely by function
4. Written description § 112
B. Duration: 14 years
C. Infringement standard; Perspective of ordinary observer: someone who might purchase it of similar design or interested in the subject.
1. Would an ordinary observer taking into account the prior art, think the accused design as a whole, is substantially the same as the patented design thus creating customer confusion?
D. Limitations
1. If entirely function, then nope.
E. Damages
1. $250 stat damages, and full profits.
Copyright
I. Exam approach
A. Figure out initial ownership
B. Look at validity of transfers
II. Introduction: § 102(a) Copyright protection subsists in original works of authorship fixed in any tangible medium of expression
A. Original work of authorship
1. Independent creation
a. Can’t copy from someone else
b. Even if it’s the same thing, as long as you independently created, it’s theoretically okay.
2. Modicum of creativity
a. Very low hurdle. Some measure of brain presenting things creatively.
b. Courts can’t do artistic analysis.
c. Facts are not copyrightable but an original compilation can be. Feist.
i. Historical research not copyrightable.
d. Rhythm and phrases such as names, titles and slogans are not copyrightable unless very clever (though, consider trademark).
B. Fixation: The medium of fixation is irrelevant but it must be by, or under authority of the author that is sufficiently table to be permitted to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.
1. Live transmissions count.
2. Videogames are fixed in ROM
3. Two categories
a. Copies
b. Phonorecords
C. Formalities. Required for acts prior to 1976 Act (Jan 1976)
1. Publication
2. Notice
3. Registration
4. Deposit
5. Recordation of Transfers
