I. Introduction to Patent Law
a. What is a patent – A legal right to exclude others from making, using, offering to sell, selling or importing(into the US) an invention for a period of 20 years from the date of filing
i. Negative right, not affirmative right to practice invention
ii. Blocking patents – Neither party can use the combined drug without the other’s permission
iii. Policy – to promote science and useful arts
b. Types of patents
i. Utility – Technological products and process
ii. Design – For ornamental rather than functional elements
1. Can overlap w/ copyright
iii. Plant –
1. Plant Patent Act (asexually reproducing)
2. Plant Variety Protection Act (sexually reproducing)
c. Intellectual Property
i. 35 U.S.C. § 101- “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
ii. Copyright – software, literary, musical art, choreographic, artistic works, aesthetic element of useful design – 17 USC § 102
iii. Trademarks – source identifiers – 15 USC §102-104
iv. Tradesecrets – valuable information in business and technology; State law regulated
1. Choice of IP – Patents v. tradesecret – can’t have both, E.g. Coca-Cola recipe protected by tradesecret
d. Overview of Patent System
i. Patent prosecution
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3. Interferences – Administrative proceedings to determine priority of invention between multiple applications for the same or similar invention.
4. Restrictions and divisional applications – Administrative processes for ensuring that each application contains only one invention
5. After grant of patent
a. Reissue – (with USPTO or Board of Patent Appeals and Interferences), only by patentee, can broaden or narrow claims, broadening is rare, may only occur absent deceptive intent
b. Re-examination – (with USPTO or Board of Patent Appeals and Interferences), by anyone, based on prior art patents or printed publications.
6. Patent Term
a. U.S. patent term is 20 years from the date of filing, not 17 years from the date of issuance
b. Term extensions for FDA and PTO delays
7. Provisional Applications
a. Establishes a right of priority for a regular application filed within one year of the provisional
b. Time during which provisional application is pending does not count towards the 20-year patent term
c. Publication of Applications – Patent applications pending for 18 months are published unless the applicant certifies that the invention will not be the subject of any foreign or international applications in jurisdictions that provide 18-month publication. Changes the patent quid pro quo – now you only get the chance of exclusive rights in return for disclosure where you before would only disclose if you got the exclusive rights by a granted patent.
ii. Territorial in enforcement
1. Infringement – US District Courts
a. defense to infringement, commonly, Patent invalid, or No infringement. Note, statutory presumption of validity for issued patent
b. Declaratory action to challenge validity of patent – US District Courts, brought by potential infringer
2. Appeal to Federal Circuit, then to US Supreme Court
iii. Policy – to promote technological progress.
1. Article I, Section 8. cl. 8 “The Congress shall have Power To lay and collect Taxes, Duties, Imposts and Excises, to pay the Debts and provide fro the common Defense and general Welfare of the United States; but all Duties, Imposts and Excises shall be uniform throughout the United States;
a. [8] – To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
b. Utilitarian rationale – Authorize power to grant exclusive rights to promote progress
i. However, grant of exclusive rights may be inhibiting, not promoting, progress in stem cell research.
c. Utilitarian rational – information is a public good.
i. Non-rivalrous public good – my consumption of a resource does not diminish it for others to use, e.g. air, national defense, information
ii. non-excludable – I can’t exclude others from utilizing a resource, e.g. air, national defense, information
i. ocean fishing – rivalrous, but non-excludable
ii. information in general is nonrivalrous by excludable (patent system)
iii. Problem with a public good
1. free riders – copiers free ride on investment, undermines incentive to invest
2. market failure – market will not produce optimum level of public good
3. Solutions = Patent system, or
a. Gov’t funded RandD, no patent system, open-source (Linux), tax breaks
d. Bad policy – Patent trolls- $ from licensing fees or infringement suits, but not adding to the library of knowledge.
i. “An industry has developed in which firms use patents not as a basis for producing and selling goods but, instead, primarily for obtaining licensing fees.” eBay v. MercExchange, 126 S. Ct. 1837, 1842 (2006) (Kennedy, J., concurring)
2. Incentive
a. Ex ante –encourage original act of invention; also to disclose, patent law as a public education initiative
b. Ex post – incentive to innovate, where innovate means bring invention to market even after conceived.
c. Creative destruction – Monopolies are conducive to innovation, describes the process of transformation that accompanies radical innovation, innovative entry by entrepreneurs was the force that sustained long-term economic growth, even as it destroyed the value of established monopoly power.
d. Prospect theory – Patents, like mining claims, allow more socially efficient development of a particular prospect
e. Other incentives outside patent system – prestige, need, benevolence, altruism, competitive advantage
3. History
a. Industrial Revolution: the primary benefit of patents shifted from the invention to the dissemination of technical knowledge
b. 1952: Modern Patent Act codified
c. 1982: Congress created the Court of Appeals for the Federal Circuit
d. Key points
i. Greater emphasis on disclosure
ii. Rise of examination system
ent of the limits of the monopoly asserted. Analogous to the meets and bounds of a parcel of property
iii. There is a “buffer” around a patented invention.
1. Doctrine of equivalence
iv. 2 Limitations
1. Limited by prior art
2. Limited to what the inventor actually invented and can enable
v. Elements
1. Preamble – Describes the basic nature of an invention
2. Transition Defines the breadth/narrowness of the claim
a. Open – “comprising”
b. Intermediate – “consisting essentially of”
i. An invention consisting essentially of A+B+C
ii. A+B+C+D infringes if D does not make the second invention essentially different
c. Closed – “consisting of “
i. Sometimes necessary if lots of prior art, crowded field
3. Body
a. Lists all elements (i.e., limitations)
b. Describes how the elements interact
c. Claims do not need to enable
i. Enablement is found in the specification
4. Body – Formal requirements
a. Each claim must be one sentence
b. Each claim must set forth how the elements interact with one another
c. Internal references must be clear
vi. General claim stategy
1. Broad independent claims
a. Claim more material, most coverage
2. Narrow dependent claims
a. More likely to be valid and enforced, ensure validity
vii. Means-plus-function claims
1. General rule: claims must cover a specific invention, not a result or function
2. Exception: 35 U.S.C. § 112, ¶ 6 allows means-plus-function claims
a. E.g., “I claim a means for attaching A to B.”
b. Exception to the general rule that you can’t patent an end result. Constrained by specification or equivalent.
3. Means-plus-function claims are limited by “the specification and equivalents thereof.”
a. E.g. means = glue, tape, staple, nail
b. Function = A is attached to B
f. 1980 Bayh-Dole Act – changed Fed Policy regarding patent. Gov’t funded research could also patent results of that research.
g. Reach through licensing agreements – downstream technology is licensed along with the license to use the upstream patented technology. With too many licensors, this problem can be exaserbated.
h. Product claim – subsequent research gets method of use product claim –so subsequent researcher can get method claim but needs to get license to use product. This is a “blocking patents” situation.
Constitutional – broad definition of patents, statutes are a narrower definition
