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

Patent Law Outline
8/24/09
·         For patent – statutory subject matter
o       Process – series of steps to get from Point A to Point B
o       Machine – mechanism that has moving parts
o       Composition of matter – mixture of substances (chemicals, plastics, etc.)
o       Article of manuf. – man-made item w/ no moving parts (i.e. wrench)
·         Invention Reqs:
o       Useful (35 USC sec. 101)
o       Novel (sec. 102) – demonstrably different from anything that already exists (prior art)
o       Nonobvious (sec. 103) – not obvious to person of regular skill in the art
o       All 3 have to be met separately – nonobvious most difficult to meet
·         Adequate Disclosure (sec. 112)
o       Must be described w/ sufficient precision and detail
§         To permit one skilled in the art to practice the invention
§         To inform others what they must refrain from doing to avoid infringement
8/25/09
·         For patents pre-1995, one rule, post-1995, different rule
o       If filed after June 8, 1995 à 20 years from date patent application was filed
o       If filed before June 8, 1995 à 17 years after issuance or 20 years from filing, whichever is later
·         Infringement (sec. 271)
o       Whoever w/o authority
§         Makes
§         Uses
§         Offers to sell or
§         Sells any patented invention (w/i the U.S.) or
§         Imports into the U.S.
o       Infringes
·         “Date of Patent” = date of issuance
·         “References Cited” = prior art
·         “What is claimed is” – claims define the patent – boundaries, this is where look when there is an allegation of infringement
·         Presumption of validity that can be rebutted
·         Rationales for Patent Law
o       Provides incentives to engage in desirable behavior (inventing)
o       Encourages disclosure of info
o       Stimulates tech’l advancement – forces us to think creatively to think around patents
o       Serves as facilitator of markets
·         Federal law preempts any state regulation of patent law
·         Fed’l cts have exclusive juris over patent cases b/c always a federal Q
·         Patent Prosecution Appeals – when patent application denied
·         No other ct sees patent cases except Ct of Appeal for Fed’l Circuit
o       Expert judges in patent law so have consistency
·         Patent Infringement Appeals
8/26/09
·         Forms of Patent Protection
o       Utility patents – most common, cover most tech’l products
o       Design patent – new, original and ornamental design for an article of manufacture
§         For shape, ornamentation attached to article for manufacture
§         Design cannot be “primarily functional”
·         Cannot affect performance/operation of the thing
·         Design patent has a “D” in front of it
·         Term

s method patent)
o       Character assessment method (claiming a method of psych’l testing of a person)
·         Non-Patentable Subject Matter
o       Laws of nature
o       Natural phenomenon
o       Products of nature
o       Abstract ideas
o       Unapplied mathematical algorithms
·         35 USC sec. 101
o       Machine, manufacture, and composition of matter
§         “Product” claims – structural elements
·         Product Claim
o       An apparatus for providing reservations for restroom use, comprising:
§         Means for receiving a reservation request from a user; and
§         A means for notifying
·         Process Claim
o       “A method comprising the steps of”
o       2 types of process claims:
§         Method of using
§         Method of making (cereal bars)
o       Could use both
·         May obtain a process patent on:
o       A new use of a known product or
o       Newly discovered property of a known product
§         Ex: using shaving cream to treat ADD
·         Process claim weaker than product claim b/c as long as don’t follow process exactly as claimed, you won’t infringe