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Intellectual Property
University of Dayton School of Law
Lech, Robert

[Professor LECH Fall 2006] Open Book Exam

Exam Reminders

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



Prior Art

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.


Monetary Damages

Usually simply actual damages


If the infringement is willful… then the patent holder may be entitled to 3x’s the actual damages.

Infringement DEFENSES

Experimental Use

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)
Sound recordings

Received protection in 1972 from Congress to receive royalties from webcasters

NO Electronic Theft Act of 1997

Criminal Sanctions

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

Search Engines

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.

Contributory Infringement


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

Encouraged infringement

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


Show similarity

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

Show access

Arnstein v. Porter