Generally:
The right to exclude others from making, using, or selling an invention for a limited time. No positive rights
Natural rights vs., Utilitarianism (USA)
Moral right to property protection vs. Society better off by creating these rights
Biopiracy: Go to a village & take their natural remedies & patent them. Who should get the rights?
Natural rights: villagers; Utilitarian: Big Pharma
Competitive Market à supply & demand à price approaches cost of production
Monopoly à set price à w/ higher price, sell less units à deadweight loss (where it is more than I am willing to pay)
Want to incentivize invention and publication
If there is no legal protection, then everything is just a trade secret, and the public does not gain
Public goods are under-produced, so 2 solutions to the problem:
The government does it, or gives research grants
Exclusive rights
Term:
Utility, Plant: 20 years from time of filing (post-1995 change to harmonize w/ Europe, get rid of submarine patents)
Design: 14 years from issuance
Publication:
After 18 months of filing,
Unless file a request and attest upon filing that they have not and will not file an application for the same invention in a foreign country or under a multilateral international agreement, that requires publication of applications 18 months after filing
Prior to 1999, kept secret until issuance
How to obtain: file with the PTO: a multi-step conversation back and forth ensues
Types of patents: Utility (90% of total), Design, and Plant (new varieties of asexually reproducing plants)
Major increase in the number of patent applications filed. (7 reasons)
(1) Difficult to gauge commercial potential during the application phase (2) Creation of the US Court of Appeals for the Federal Circuit (3) Congressional support (4) Tool to get venture capital (5) Vehicle to publicize information (6) Increase in research productivity (7) Block competitors
Patent claims and specifications
Claims come at the end of the specification
Must have Specification, Claims, and Drawings
Specification teaches, claims claim
To prove infringement, the patentee must demonstrate that the defendant’s alleged infringing product or process includes each of the listed elements from the claim(s) or the equivalent
· Utility patent requirements: Novel (§102), non-obvious (§103), useful (§101, 112)
· Patents are the hardest form of IP right to obtain, and also the strongest
o Inverse relationship between strength and length of protection
· Court of Appeals for the Federal Circuit
o Created in 1982, has exclusive jurisdiction of cases arising under the Patent Act.
§ There are exceptions, like Holmes Group v. Vornado Air (pg 110) – didn’t have an issue of federal scope
o Wanted a single authority on patent matters, instead of several conflicting app courts; also to limit forum shopping
o Merged the CCPA and the US Court of Claims to create this court
o Filing
Only go from BPAI to District Ct in rare civil cases
o Infringement
o Note: patent counterclaims for issues like antitrust will go the regional circuit court of appeals
· Remedies
o Injunction
o Damages: lost profits or reasonable royalty, with interest and costs
Defenses to infringement claims:
(1) Patent invalidity (2) patent misuse (3) inequitable conduct (4) experimental use (5) prior user
Patent Prosecution
Restriction requirement: only 1 invention may be claimed per application
Traditional model
PTO tried to implement new rules w/ max of 2 continuations, 1 RCE, but the rules were invalidated, because of no statutory basis: Tafas v. Kappos (Fed Cir, 2009)
The PTO doesn’t have substantive rule making power, but they do have procedural rule power. The line is blurry
Patent Document: (1) preamble (2) transition (3) body
Preamble – recites the context/purpose
Transition phrase:
Comprising: including (open ended)
Consisting of: exactly (closed)
Consisting essentially of (somewhere in between, but more closed than open)
Infringes so long as it does not materially alter the composition
Claims:
The most important part of the document
Inverted triangle model
Start out as broad as possible, and keep amending until the examiner accepts
§ 112, ¶ 2: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Preamble – recites a context or purpose, or overall theme or structure and may or may not limit the claims (“A method of making coffee…”)
Statement of intended use does not let it escape from prior art
But if the preamble cites structures it will be limited accordingly
Black-letter law is that it gives “life meaning and vitality” to the claim
Transition – determines whether the claim is op
, and Swartz could not rebut the evidence
o In re Fisher (Federal Circuit, 2005) (168)
§ EST: a short nucleotide sequence not patentable. Lacks utility & enablement
§ Policy:
· Who would want ESTs to be patentable? – Universities, biotech (the early developers)
o Some companies (e.g., biotechnology) need capital derived from early patents, to recoup costs, or to attract investment from downstream players so development can continue.
· Who wouldn’t? – Pharmaceuticals, Monsanto (the upstream developers)
· Lefstin: Aren’t these the same as microscopes (qualitatively)? – Both purely for research & may not give you anything of value. Hard to distinguish, isn’t it.
· Inoperability as a lack of utility
o Must operate as claimed or a patent may be denied for lack of utility
o Newman v. Quigg
§ Could not patent the perpetual motion machine
o Fregeau v. Mossinghoff
§ No patent for method of enhancing the flavor of a beverage by passing it through a magnetic field
· 2 step test
1. PTO has the initial burden of challenging a presumptively correct of assertion of utility in the disclosure
2. Only after the PTO provides evidence showing that a PHOSITA would reasonably doubt the asserted utility does the burden shift to the applicant to prove utility is specific, substantial, and credible.
· Morality requirement (no longer exists)
o Must be useful and beneficial to society
· §101 used to not be a big hurdle, but the Supreme Court has made it an issue again
· Patents, biotechnology, and the Bayh-Dole Act (139)
o Bayh-Dole Act:
§ Allows universities & other non-profits to “elect to retain title” for inventions resulting from public funding
· Proponents: it has encourages R&D
· Opponents: excessive secrecy, financial conflict, corporate manipulation
o European approach
§ A negative definition of what isn’t eligible for patent protection
