INTELLECTUAL PROPERTY OUTLINE
[Professor LECH Fall 2006] Open Book Exam
Answer each essay question sequentially by going through each element of the answer
Know what the question is asking
ANSWER THE QUESTION using arguments from both sides and pick a side and explain why the side you chose is the better choice.
What is patentable? [elements of patentability]
To be patentable the invention must be…
Patentable Subject Matter
Must have a written description
This educates people on what exactly is protected: prohibits broad claims
This proves the inventor was in possession at the time he filed the invention
Mere Ideas are NOT patentable subject matter
Software IS patentable
Mathematical algorithms alone are NOT patentable… the implementation of the algorithm is patentable.
If you have an element that does NOT exist in a prior art… then it is new
If you find every element in prior art then it is NOT new
So if you have every element in a prior art but leave out one element to create a unique invention… it is still NOT new b/c you still have every element in the prior art in your invention
For novelty… it is not the novelty of functionality but of the claims.
You simply go step by step through your claims and say “Is it in the prior art…” as soon as you get a “no” then you have cleared the novelty hurdle.
Invention or process is NOT new if your invention is the same as a previous claim AND if it is described… it anticipated you.
Become prior art at the date of publication but one could argue it was the date it hit the newsstand.
Something is for sale when It is OFFERED commercially for sale and that the invention is at lest ready for patenting (detailed drawings, materials, etc.)
Invention or process must solve a problem
Does the prior art suggest to those of ordinary skill in the art that the invention is non-obvious
If the invention is a mere trivial step forward in the art and not a significant technical advance from the prior art then it may simply be obvious.
If one of ordinary skill in the art would be inclined to put the elements in the prior art together then the mix is obvious
In Re Dembiczak
Large orange trash bag, which resembles a jack-o-lantern.
Prior-art contained decorated paper and trash bags
However, there was no inclination to put the two together.
An invention is NOT patentable when…
The invention is not new… it was made before
The invention was sold more than a year before the inventor filed for the patent
The invention is disqualified by prior use or knowledge (obvious)
Types of patents
Utility [focus of this course] Design
Protect how something looks (last 14 years)
Protects engineered flowers [Plant Variety Act]
Patent Holder’s Rights
The patent holder has the right to….
Stop the importation of infringers
For a term of up to 20 years from the date of application [design patents last 14 years] Patents are only protectable in the country in which you register them in… however, you may stop an invention from being imported into the country that you are registered in.
A Patent Cooperation Treaty between 90 countries has been formed in which one may reserve rights in all of those countries with one application
Patents do not automatically grant the inventor an affirmative right to do anything: a pharmaceutical must still be certified by the FDA
Patent holder does NOT have the right to
Control further research
Control or prohibit subsequent improvements related to the invention.
Must be direct infringement (35 U.S.C. 271 (a)
Product is the same as one’s CLAIM
Using the same process or invention
Serving the same function in the way to achieve the same result
Putting a rubber band in between a door and door frame instead of the patented spring.
In Festo, the court held, If you amend your claim to get around prior art… then you are not entitled to the doctrine of equivalence on that claim…. Must prove literal infringement.
Usually simply actual damages
If the infringement is willful… then the patent holder may be entitled to 3x’s the actual damages.
You ought to be able to test the claims of another patent to see if it is enabling… to prove yourself
Make sure you retain restrictive CONTROL over the experiment
Invalidity of original patent
Attack the validity of the original patent… if it is invalid then there is no infringement
Inequitable Conduct by original patent holder (misuse)
If the original patent holder is trying to expand the scope of their patent protection
Look to see if they are broadening the scope or extending their protection with an anti-competitive effect.
Motion Picture Patents Co. v. Universal Film
Tried to compel people to use their device to see the film
They tried to keep their monopoly over the film with their patent over their device.
First Sale doctrine or the Doctrine of Exhaustion
Once you sell an item that embodies a patented dev
An intention to have all of their contributions merged into one work
Work has to be copyrightable
Digital Copyright Law
For the first time… government imposed technological design constraints… you can copy from the original…. NO digital copy of another copy… it CANNOT be done)
Received protection in 1972 from Congress to receive royalties from webcasters
NO Electronic Theft Act of 1997
Fines and up to 3 years in prison for distributing over $1,000 worth of copyrighted materials
Digital Millennium Copyright Act
17 U.S.C. § 1201-1205
Greatly expanded copyright protection for digital work
Goes beyond mere copy protection but now limits access… limits on decrypting systems and the trafficking of decryption tools.
Non-profit libraries and educational institutions are exempted
Fair use saves the day for search engines
Took only that which was needed
The copyrighted work was already published on the web
It helped his market
Although the search engine is commericial… it is only 1 of 4 factors which was outweighed by the other 3.
Look to see if they have the right and ability to supervise their users
Knowledge of the infringement
They conceded that they knew infringement occurred in most downloads
Sent newsletter promoting its ability to copy popular songs
If you give the means to infringe and you encourage the infringement… you’re toast!
The “other legitimate use” defense is rejected here because of specific knowledge of user infringement and inducement
Lay them side by side and see if they are the same
Test of ordinary observer
The two are strikingly similar (virtually identical)
It shouldn’t take an expert to see the similarities
The more similar the copy… the less access you have to show
Arnstein v. Porter