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

 
PATENT LAW
PROF ROWE
FALL 2006
 
 
v      BEGIN OUTLINE WITH 35 USCS §101, 102, 103, 112 – ORGANIZE BY SUBSECTION
 
v      INTRODUCTION FROM BOOK
Ø       Bonito Boats v. Thunder Craft
§         Art. 1, §8, Cl. 8 =Patent Clause – “encourage innovation and avoid monopolies which stifle competition w/o concomitant advance in the Progress of Science and Useful Arts.”
◊        Purpose best served by free competition and exploitation of either that which is already available to the public, or that which may be readily discerned from publicly available material
§         Congress may not
◊        create monopolies of unlimited duration
◊        authorize patents to remove existent knowledge from public domain
◊        restrict free access to materials already available
§         First Patent Act 1790:
◊        Grant of limited monopoly of 14 yrs to applicant that hath invented or discovered any useful art, manufacture or device or any improvement therein not before “known or used before the application”
◊        Must be sufficiently useful and important
◊        Must submit specification and model so specific to distinguish and to enable other person skilled in the art to construct the same
§         Statutory Patent Rights:
◊        35 USC §101: protection to whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof
◊        35 USC 171: any new original and ornamental design for an article of manufacture
◊        35 USC 102(a) and (b): a person shall be entitled to a patent unless
·         (a) the invention was known or used y others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
·         (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date of application for patent in the US
◊        35 USC §103: no patent protection where differences in subject matter sought to be patented and prior are are such that the subject matter as a whole would have been obvious at the time of the invention to a person of ordinary skill in the art
·         i.e. extends field of unpatentable material beyond that which is known to the public to include that which could readily be deduced from publicly available material
§         “if an inventor allows invention to go into public use, or be publicly sold, his voluntary act or acquiescence in the public sale and use is an abandonment of his right to patent.
◊        Knowledge that is already available to the public is excluded from patentability
◊        If public sale has been made before the patent application, it is not patentable.
◊        Improvement on existing designs is not patentable
§         Patent Requirements – new, useful, non-obvious
◊        Novelty
◊        Utility
◊        Non-Obvious – not anticipated by prior art
§         Thus, applicant whose invention meets 3 criteria, and is willing to reveal to the public the substance of his discovery and the best mode of carrying out the invention, is granted the right to exclude others from making, using, or selling the invetion throughout the US for period of 20 years.
§         Goal of Patent system – bring new designs and technologies into the public domain through disclosure
v      Public Policies – Why have a patent system?
Ø       Provide incentives for people to innovate and invent – protect research, money and time spent by granting temporary monopoly and prevent copying – encourages people to go ahead and spend money b/c will be protection from free riders
Ø       Want Public to benefit from disclosure – so will grant patent/temp monopoly to encourage disclosure
§         Trade secret v. patent – public gets no benefit from trade secret, but patent law provides public disclosure and protects that disclosure
Ø       Encourages licensing – getting permission to use patented products
Ø       Encourage improvement and refining of products on the market
Ø       Starting default rule on information: free competition… let consumers decide.
§         Why did we need the patent law system?
◊        To encourage people to invent/innovate by giving the exclusive right to their invention.
◊        Counter argument: it is a legal monopoly.
§         We are getting further and further from the default rule.
§         Why do we have the patent law system that we have today?
§         Others can invent around your patent and still invent the same class of product. Problem with this is the litigation costs associated with defending your inventions.
§          
 
v      OVERVIEW:
Ø       Patents are most potent right in IP – gives monopoly to inventor to bar everybody else from making, selling, etc. thus taking it out of the public domain
§         Don’t want to take something out of public domain unless meets all requirements of patents – to protect public use
Ø       PATENT ACT OF 1952: STATUTORY SUBJECT MATTERà 35 USC §107
§         Allows inventors to get patents on
◊        1. Process
◊        2. Machine = has moving parts
◊        3. Composition of Matter/substances
◊        4. Article of manufacture = man made item w/ no moving parts
§         these areas must meet requirements: new, useful, non-obvious
Ø       NON-PATENTABLE SUBJECT MATTER
◊        1. Laws of nature
◊        2. Natural phenomena
◊        3. Products of nature
◊        4. Abstract ideas
◊        5. Unapplied mathematical algorithms (laws of gravity, Pythagorean theorem)
◊        MENTAL STEPS DOCTRINE: any invention that was principally a matter of mental step was not patentable
 
 
Ø       3 REQUIREMENTSà
§         Usefulness/Utility(§101): invention must have some application for beneficial use in society, minimally operable towards some practical purpose
·         don’t need high demand
·         Does not mean invention has to be better
§         Novel (§102): invention must be new & different – not anticipated by prior art
·         Compare to prior art – is patent already covered by some existing invention
·         Don’t want to take from public domain
§         Non-Obvious (§103): invention cannot be obvious to someone skilled in the art
·         Difficult standard
·         Measured on case-by-case basis
§         4th requirement…Adequate Disclosure/Enabling (§112)
·         To permit one skilled in the art to practice the invention
·         To inform others what they must refrain from doing to avoid infringement
Ø       Once meet all above criteria – USPTO issues a patent that is presumed valid
§         Infringement: Can challenge patent in patent litigation process –
Ø       Length of patent;
§         After 6/8/95: patent expires 20 years after filing date on patent
§         Before 6/8/95: patent expires 17 yrs after issuance of patent, or 20 yrs after filing date – whichever period is longer
 
v      OBTAINING A PATENT
Ø       Steps:
§         File application with USPTO
◊        Application drafted by patent prosecutors
◊        Application must include specification so that person skilled in the art is able to practice the invention (= full disclosure)
◊        Must contain specific, definite claims (=boundaries of patent)
◊        Patent issues
Ø       Application requirements: (See 112)
§         Detailed description of preferred embodiment
§         Each claim must be 1 sentence long (pg. 23)
§         Preamble, transition phrase, and body
§         Transition phrase: comprising, consisting, or essentially consisting of
◊        Comprising: the most open. Means if your device contains elements a, b, but u have also added element C, you have infringed.
◊        Consisting of: must have exactly the elements listed, no more, no less. 
◊        Essentially consisting: allows that if you have an additional element, you could still infringe the patent so long as it does not affect the novelty of the characteristics.
§         In order to infringe a patent, it is only necessary to infringe one of the claims, but you must meet all of the elements of the claim
v      Patent Process:
Ø       Patent Prosecution Appeals Process:
§         PTO Examiner (reviews file and grants or refuses patent) à PTO Board of Patent appeals and interferences à Dist. Ct for District of Columbia or Ct. of Appeals for Fed. Crct. à Supreme Court
Ø       Patent Infringement Appeals Process:
§         District Court à Ct. of Appeals for Fed. Crct. à Supreme Court
Ø       Note:
§         Federal Courts have exclusive jurisdiction over patents so always start in federal court system
◊        No state version of patent law (but there is state versions of TM cases)
§         Why exclusively federal jurisdiction over patents? 
◊        Technical expertise
◊        Greater consistency if all federal
 
v      TYPES OF PATENTS = 3 forms of patent protection
Ø       1. Utility Patents (everything in this course) (§101)
◊        Cover function, the way something works
Ø       2. Design patents (§171)
◊        New, original and ornamental design for an article of manufacture
◊        surface ornamentation, configuration or shape of an object are most typical
·         Ex. Running shoes – where the nike shoe goes
◊        Design cannot be “primarily functional”
·         Must be just ‘for looks’
·         Cannot affect the performance of the shoe, so if the shox on the shoe actually affect the function of the shoe, they are not part of design but part of utility
◊        Nonobviousness is judged from the perspective of the designer of ordinary capability who designs articles of the type presented in the application.
◊        Term is 14 years from date of issuance
◊        can have both utility and design patents on same invention – nike symbol and circle on shoe get the design patent, but the functional part of shoe gets utility patent
Ø       3. Plant Patents
◊        Distinct and new varieties of plants
◊        Must have been asexually reproduced
◊        Must meet novel and non-obvious requirements
◊        Term = 20 yrs
Ø       PVP Certificates
§         Patent-Like Plant Variety Protection
◊        Certificates, not patents, but grants patent-like protection
◊        Only for sexually reproduced plants – mostly seed bearing plants
◊        Administered by USDA (Dept. of Agriculture) not PTO
◊        Still 20 yr term
 
v      International IP Agreements: (no Global patent system)
Ø       Paris Convention – fundamental patent law treaty
◊        priority date is important (if you file one application in US and then within 1 yr. file application in another country you get the filing date that was in the US; first time we had a foundational agreement regarding copyrights and patents – requires signatories to treat all signatories alike)
·         Ex. File in Germany, then have 12 months to file in another state, but have same priority date as in Germany (protects for 1 year from competitors who try to file same patent in a different foreign state)
Ø       Patent Corporation Treaty (PCT) – open to any country that is member of Paris Convention
§         allows simplified procedure of submitting one application to all countries. Over 100 nations have adopted it
Ø       TRIPS Agreement:
§         trade related aspects of IP rights. Countries must observe basic requirements and standards (most of which are the same as the US) to promote uniformity
§         3 Main Changes
◊        Changes patent term to 20 yrs
◊        Acceptance of earlier priority date
◊        Introduction of provisional patent applications: shortened version.. Don’t need claims, just need drawings.. Like a pre-application that gives you 12 months w/in which to file a real application. Application is abandoned if don’t file real app w/in 12 months.
·         Benefit:: get the earliest filing date on your application, but the 20 year term doesn’t

single portfolio (hub, partnership) – needs computing power to operate to calculate share prices
◊        State Street claimed patent ‘056 invalid b/c not statutory subject matter under §101 b/c abstract idea, series of calculations and business methods –
◊        “it’s just fancy math”
§         Hist: Dst. Ct: held for State Bank after applying FWA test – no physical component transformation & said, It is long established that business plans and systems are not patentable
§         Issue: whether the ‘056 patent is invalid for failure to claim statutory subject matter under Section 101, is a matter of both claim construction and stat. construction (whether this business method falls within the §101)
§         Held:
◊        claims are Eligible for Patent Protection b/c the are statutory subject matter – invention relates to system for calculating many factors and determining investment fund
◊        apply the new test for practical utility – a useful concrete and tangible result
§         RULE:
◊        the question should not focus on which of the four categories of subject matter a claim is directed to (process, machine, manufacture, or composition of matter) but rather on the essential characteristics of the subject matter, in particular its PRACTICAL UTILITY (here this method/process has utility)
◊        Patent does not claim an abstract idea
·         But claims a programmed machine that produces a useful, concrete, and tangible result.”
·         Even if the useful result is expressed in numbers, such as price, profit, percentage, cost, or loss
◊        Today there are no restrictions on patenting business methods
◊        *Remember – the holding merely says the invention is eligible subject matter under 101 – validity could still be challenged on other bases – e.g. novelty 102, obviousness 103, prior use
◊         (1) Mathematical Algorithm Exception
Ø       Mathematical algorithm is abstract idea if not applied, but if applied in a useful way then it is patentable
·         Transformation of data, representing discrete dollar amounts by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula or calculation b/c it produces a useful, concrete, and tangible result”
◊        (2) Business Method Exception Exception
·         No longer valid exception – under §103 subject to same legal requirements as any other process or method
·         Claims cannot be judged too broad under §101 – so even if a claim is too broad, this has nothing to do with statutory subject matter
·         At issue here is eligibility (i.e. statutory subject matter) not validity (i.e. broadness of claims)
Ø       Judge Rich’s Logic for State Street:
§         Subject matter exclusions are:
◊        Laws of nature, abstract ideas, and natural phenomena
§         The only way to exclude a math algorithm is abstractness
§         An invention is not abstract if it is useful
§         This invention shows practical utility; thus it is not abstract
§         Therefore, FWA test not necessary
Ø       P. 98: European & Japanese approaches
◊        Do not allow patenting of business methods b/c do not regard as inventions
 
 
v      BIOTECHNOLOGY & COMPOSISIONS OF MATTER
Ø       Typically fall under 2 categories:
§         1. Product of nature (not patentable if naturally occurring)
·         if make significant artificial changes, then can get product and process claims
§         2. Genetically Engineered Organisms
·         are they products of nature?
Ø       Rule: May not patent a product of nature, But, May patent any significant changes, alterations, modifications to products of nature
§         EX. Find mineral in Africa – can’t patent in this natural state – then discover compounds in mineral and develop purified form of mineral to use for other things – can patent the purified modification
§         Can get both a product patent on isolated patent and a process claim on uses for compounds
Ø       Diamond (Commissioner of Patents) v. Chakrabarty (1980)- first time asked to grant patent protection to living matter
§         Chak artificially created bacteria that eats oil. Filed 3 claimsà
◊        2 process/method Claims – (1) method of making bacterium & (2) method of using bacterium to consume oil
◊        1 Product claim – directed toward bacterium itself
§         History:
◊        PTO Rejected Claim 3 on ground that the bacterium was a product of nature & living things/products of nature are not patentable subject matter under §101
·         i.e. bacterium was a living thing outside of §101 – b/c doesn’t cover living things
◊        PTO Conclusion: §101 was not meant to cover living things such as lab created micro-organisms and PTO board th