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Patent
University of Florida School of Law
Rowe, Elizabeth A.

 
Patent Law
Professor Rowe
Fall 2015
 
Governing Statutes
·         36 USC §101 (1952) (Patent Statute)
o   The right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States
·         America Invents Act (2011)
·         Assume everything mentioned is ’52 unless specified
Rationale for Patent System
·         Incentives to engage in desirable behavior
·         Encourage disclosure of information
·         Stimulate technologic advancements
·         Facilitate the market (patents are tangible assets that you can sell, license, etc.; they are more marketable than trade secrets)
PTO- administrative agency
·         Goes to district court, court of appeals for the federal circuit, SCOTUS.
·         Feds have exclusive jurisdiction of patent cases.
·         Denied patents can be appealed straight to federal circuit appellate court
 
Dog Toy Handout
What is claimed section is going to be the most important in terms of what the product is and the patent for the specific section of the product and for the function specifically.
·         Would have to ask what a protrusion exactly is?
·         How many protrusions are allowed and still have an infringement claim?
·         What does predetermined mean for the product’s length?
·         Example against the Prada Doggy Chew Toy Bag, why does it not infringe?
o   Substantially different, there is no solid main section and thus it does not fall under the claimed information. No solid main section having a diameter in longitudinal length.
·         Next section are the alternatives of what it can be made out of. But this wouldn’t likely infringe because it isn’t included in the list.
·         Claim 17: A method for makingà compressing particles of cellulose…since the point of the patent is to be able to now make it. Not you making it, but the “Phosita”, who is the person having ordinary skill in the art, is able to make the product.
o   So nobody else can make a product like this using this process.
o   What’s in it exactly? They don’t tell us because they keep that information as a TS, and thus they aren’t required to divulge this information. Because you are allowed to keep some manufacturing aspects as Trade Secrets so you get the benefits of both ways.
o   Sometimes they do disclose all of this information. Possible then to replicate yourself.
 
Forms of Protection
·         Utility patents (useful creations)
o   Before 6/8/1995 longer of 20 yrs from date filed or 17 years from issuance
o   After 6/8/1998 20 years from date filed
o   The AIA moved us from first to invent to first to file which favors big corps with lawyers who have done this before.
·         Design patents- new, original and ornamental design for an article of manufacture
o   Cannot be primarily functional
o   Lasts 14 years from date granted
o   Easier application than utility app
o   Higher issuance rate (80% vs 50% for utility)
o   Designated by “D’” before number
·         Plant patent- distinct new varieties produced asexually (§161)
o   No seeds/pollination, yes grafting/budding. Must be distinct and new varieties of plants.
o   No tuber propagated plants.
o   Any infringement must also be an asexual progeny. (must have been asexually produced)
o   Genetically identical but independently developed is NOT an infringement. (Does not cover independent discovery-this is a limitation on the plant patent)
o   Can get a utility patent still for a plant but if you have had difficult with this than the plant patent can be a good additional option. The utility is still the preference for the patentee.
·         Plant variety protection certificate- sexually reproduced plants (PVP Certificates)
o   Administered by Department of Agriculture, not PTO. NOT A PATENT, JUST A CERTIFICATE WITH PATENT LIKE QUALITIES.
o   Good for 20 years from grant. Easier to get one than a utility; only need to meet novelty and non-obviousness. Only for sexually reproduced plants.
o   There are exemptions for research. The researchers will conduct an inquiry for the details of the plants and farmers also have an exemption for their seeds.  
o   In description can include the obvious features of the plant that will be covered by the patent.
·         Product Claims
o   A beverage filter comprising…
§  A filter element…
§ 

power comes from Article 1, Section 8, Clause 8 (foundation for the patent being as powerful as it is). Import this language into the patent act directly.
·         Process- way/series of steps for carrying out a particular task
·         Machines- thing and process of making or using thing
o   Machine is mechanism with moving parts
·         Manufacture-
·         Composition of matter- chemicals, drugs, plastics, etc.
·         Article of manufacture- stuff that’s not machines
·         Non-patentable: laws of nature, natural phenomena, products of nature, abstract ideas, and unapplied mathematical algorithms.
o   Abstract ideas are very important – this is why we didn’t patent software and computer information for so long. Similar to unapplied math, if it’s mental activity without a physical application, then it should not be patentable. But if it is applied and transformed into a physical use, then it may be patentable.
o   Reoccurring word here is nature. If God made it, you can’t get a patent on it.
·         1st exception: significant artificial changes to product of nature renders it patentable.
o   Critics say everything is controlled by laws of nature so this is wrong.
·         Biotechnology
o   Involves living organisms; the “manipulation” of life. NEED SIGNIFICANT ARTIFICIAL CHANGE. If you created a bird from scratch in the lab, then this is patentable, but not a bird just flying around outside.
o   A naturally-occurring substance CANNOT be patented.
o   In order to be patentable, a human being must have made significant changes to it in some way
o   J. Frankfurter: “Everything that happens does so in accordance with the 'laws of nature' even if imperfectly understood.”
o   Would make it impossible to patent biotechnology