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

 
FOUNDATIONS OF THE US PATENT SYSTEM
 
1.)     The patent term
a.       The US constitution specifies that inventors are to be secured exclusive rights to their discoveries “for limited times” but doe not specify any particular number of years
b.       Currently:
                                                               i.      For any patent application filed on or after June 8, 1995, that patent will expire 20 years after the earliest effective US filing date
                                                             ii.      For patents that were in force on June 8, 1995, or for patent applications already pending on that date, the patent will expire n the later of the two dates – either 20 years from filing, or 17 years from issuance
c.        The “term”, or enforceable life, of the patent does not begin until the date the patent is issued by the USPTO
                                                               i.      While a patent is still pending, there is no basis for a lawsuit alleging patent infringement, because there is not yet any patent in existence
                                                             ii.      Patent application tendencies usually last about 2 years, thus, the colloquial 20-year term is, in reality, usually about 18 years
 
STATUTORY SUBJECT MATTER UNDER §101
 
1.)     General
a.       The statutory categories of §101
                                                               i.      To be patentable, the invention must fall within at least one of the four classes of statutory subject matter set forth in §101:
1.       Processes
a.       Synonymous with method in patent parlance – merely a series of steps for carrying out a given task
b.       Process patents have been granted for a method of making a “stuffed-crust” pizza, and for a method of “one-click” online ordering
2.       Machines
a.       Synonymous with an apparatus – generally has moving parts, such as an internal combustion engine
3.       Compositions of matter
a.       Includes chemical compositions and mixtures of substances such as metallic alloys
4.       Manufactures
a.       This is the “catch-all” category for human-made subject matter without moving parts, such as a helically grooved foam football
                                                             ii.      SC case law has viewed the statutory list of classes to be merely representative and indeed has included “anything under the sun made by man”
b.       The federal circuit has said that the question of whether a claim encompasses statutory subject matter should not focus on which of the four categories a claim is directed to, but rather the inquiry should be on the “essential characteristics of the subject matter, in particular, its practical utility
c.        Claiming the inventive concept with different statutory categories
                                                               i.      The claims of a patent need not explicitly recite the category of potentially patentable subject matter to which the invention belongs
1.       This is usually clear from the face of the claim
2.       As long as the claim is sufficiently definite under §112/2 nothing further is required
                                                             ii.      The ‘invention” may be claimed in many different ways, even within a single patent application, and the claims of that application may be drawn to more than one statutory subject matter category
1.       In some instances, the USPTO will require “restriction” of certain groups of claims into separate patent applications
a.       Restriction is appropriate if the claims are directed to “independent and distinct” inventions
2.)     §101 Processes
a.       Basic principles
                                                               i.      Often, the process is a novel and nonobvious method of making some end product
                                                             ii.      A process claim can be granted for a novel and nonobvious method of making an old product
1.       This reflects the importance to society of stimulating new process innovation
b.       Process v Product
                                                               i.      A process claim is generally considered narrower in scope (and thus of less economic value to the patent owner)
1.       In other words, the scope of protection for the product, claimed as a product, is not limited by the process with which it is made (nor is it relevant whether the product owner knew of or described the processes used by the accused infringer to make the product
c.        Computer-implemented processes
                                                               i.      Although unapplied mathematical algorithms, formulas, and equations are considered unpatentable abstract ideas, the Diehr court made clear that the presence of such mathematical subject matter in a patent claim does not necessarily deprive it of potential patentability under §101
                                                             ii.      Claims must be analyzed as whole, not dissected into their component parts, for purposes of determining if an invention falls within one or more of the §101 categories
d.       Business methods
                                                               i.      A process or method of doing business is patentable as long as the claimed method is not an unapplied, abstract idea or concept
3.)     §101 Machines
a.       The only real area of controversy involving the machine category is whether the programmed computers qualify as machines within the meaning of §101
                                                               i.      The trend of recent case law is to generally answer this question in the affirmative
4.)     §101 Compositions of matter
a.       The SC defined the phrase “compositions of matter” as “consistent with its common usage to include ‘all compositions of two or more substances and… all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids’”
b.       Structure v Properties
                                                               i.      The physical structure is what must be novel, not merely its properties
                                                             ii.      The discovery or recognition of a composition’s previously unappreciated property will not impart patentability to that composition if its structure is already known
1.       Such a discovery might merit patentability if claimed as a process, but not a product
c.        Purified forms of natural products
                                                               i.      “Purified forms” of natural products may be patentable if sufficiently different from the nonpurified forms so as to be novle and nonobvious
d.       Life forms
                                                               i.      The issue is not whether the claimed substance is living or inanimate, but whether it constituted an invention made by human intervention
1.       The court in Chakrabarty relied on the language used by the drafters of the original patent act: the selection of broad language suggested that the drafters’ goal was to stimulate innovation in a wide variety of then-unknown technologies and scientific fields
                                                             ii.      Although the USPTO views multicellular organisms as potentially patentable, it has set one important limit: the agency will not grant patents on human beings per se
5.)     §101 Manufactures
a.       The Chakrabarty court defined it as “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery”
b.       Computer programs embodied in a tangible medium, such as floppy disks, are patentable subject matter under §101
                                                               i.      Physical embodiment of an unapplied algorithm on a floppy disk and claimed as a manufacture is patentable
6.)     Nonpatentable subject matter
a.       Judicial decision have established that the following are not patentable subject matter
                                                               i.      Laws of nature
                                                             ii.      Natural phenomena
                                                           iii.      Abstract ideas
                                                           iv.      Unapplied mathematical algorithms
                                                             v.      Products of nature
7.)     Plant patents (§161)
a.       This is governed by §161, which says that plant patents are available for those who “invent or discover and asexually reproduce any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state”
b.       The hallmark of a plant patent is the “asexual” reproduction of the new plant variety
                                                   

                       ii.      The loss of right provisions §102 b/d key off of the date that is one year prior to the applicant’s filing date (the critical date)
d.       What is a printed publication?
                                                               i.      Patent law is fairly liberal about what will suffice to put a technology disclosure into the hands of the public
1.       Even a drawing with words can qualify if it is sufficiently enabling
2.       A single copy of doctoral thesis, properly cataloged in university library, qualifies as a printed publication
                                                             ii.      “Public accessibility” has been called the touchstone in determining whether a reference constitutes a “printed publication”
                                                           iii.      Date of publication
1.       The date the relevant public can actually gain access to the publication is the date of publication prior art purposes
e.        The strict identity rule of anticipation
                                                               i.      The rule states that in order to evidence anticipation of a claimed invention under §102, a single prior art reference must disclose every element of that invention, arranged as in the claim
f.        Enablement requirement for prior art
                                                               i.      Reference MUST be enabling and describe claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the invention field
1.       Met if one of ordinary skill in the art could have combined the publication’s description of the invention with his knowledge to make the claimed invention
                                                             ii.      Consider prior art reference together with knowledge of PHOSITA
g.        Inherency
                                                               i.      If inventor tries to claim advantage or modification that necessarily flows from prior art reference, reference inherently anticipates inventor’s claim, even if the advantage was not appreciated by inventor of prior art
                                                             ii.      Cannot establish inherency by probabilities or possibilities – evidence must make clear that missing descriptive matter is necessarily present in item described by reference
h.       Species/genus anticipation
                                                               i.      A genus is a grouping or category made up of multiple species that share some common characteristic
                                                             ii.      A heuristic to keep in mind is that “species anticipate genus, but genus does not necessarily anticipate species”
1.       The genus as a whole cannot be new if one or more of its constituent elements is old
                                                           iii.      Courts have held that a prior genus does not always anticipate a later claimed species, but may render the species obvious under §103
i.         Geographic distinctions in §102
                                                               i.      Anywhere in the world
1.       “Patented or described in a printed publication” either before the invention date (per subsection a) or more than a year before the filing date (per subsection b)
                                                             ii.      In the US
1.       Prior knowledge or use by others (as per subsection a)
2.       Placing the invention “on sale” (as per subsection b)
                                                           iii.      Why the distinction?