Miller/IPSurvey/Fall2012
INTRODUCTION
constitution article 1 section 8 clause 8: congress has power to promote progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to respective writings and discoveries
IP law protects intangible objects
similarities w/ tangible objects:
exclusive rights to use (in IP context make derivatives), sell, split rights, assign
difference from tangible objects:
excludability: ability to be kept away from others (intangible is not excludable; tangible is)
rivalrous consumption: inability to limit enjoyment to finite number of people (intangible is rivalrous, tangible not)
can change tangible property in a way that intangible cannot
costs
tangible objects
fixed costs (building, equipment, minimum labor); variable (raw materials, shipping, extra labor)
produce until marginal revenue = marginal cost
everyone spends the same amount per unit
intangible objects
production cost + invention cost
invention cost not uniform for all actors; one who wants to invent something has extra cost
imitators do not have to invest invention cost if they can copy easily
how to recover invention cost? lead time, first mover advantage, bundle services
w/o IP law people will only invest in innovation to the extent they can w/o regard to cost recovery
right to exclude: if generating new IP costs > making tangible items to embody the IP, provide right to exclude from making tangible items to the extent necessary to cover cost of innovation
purpose of IP law:
facilitate market transactions in intangible assets
protect innovators' ideas and incentivize investment in innovation
limit reach of protection so as not to stifle new inventions (freedom to imitate)
components of IP law:
federal patent act 35 usc 271: rights to a design
excludes others from making/using/selling/offering/importing patented invention
broad protection but short time period (usually 1 claims particularly pointing out and distinctly claiming subject matter which applicant regards as his invention
claim fails definiteness only if reasonable efforts at claim construction prove futile (insolubly ambiguous); not indefinite if amenable to construction however difficult it may be
patent presumed to be valid; requires clear and convincing evidence of invalidity
need not be defined to mathematical precision; can be shown through examples; only has to adhere to a defined standard
purpose: provide public notice
adequate written disclosure
enablement requirement: 35 usc 112: specification's written description of manner/process of making/using invention in full/clear/concise/exact terms should enable any phosita to make and use the same
phosita should be able to make and use invention w/o undue experimentation
“extensive” experimentation OK so long as it is not undue
factors that make experimentation undue:
quantity of experimentation necessary
amount of direction/guidance presented
presence/absence of working examples
e.g. very low percentage of working examples resulting from experimentation may be cause for undue experimentation
nature of invention
state of prior art
relative skill of those in the art
predictability of the art
breadth of the claims
written disclosure alone may not be enough to enable public to make invention; may be necessary in some cases (e.g. living materials) to deposit sample for people who want to practice invention
written description requirement: 35 usc 112: specification shall contain written description of invention
must describe more than how to make and use; must also convey possession of invention w/ reasonable clarity
ensures not only that enabling disclosure is given but also a disclosure ensuring that public is dealing w/ person who actually invented the claimed invention
ensures that claims introduced in amendments by claimant after start of patent prosecution are supported by originally filed disclosure
generalized language insufficient for written description requirement if it doesn't convey detailed identity of invention
best mode requirement: 35 usc 112: specification shall set forth best mode of carrying out invention contemplated by inventor
35 usc 282b3a: claim can't be held invalid solely on this
before 2011: 2 step subjective/objective inquiry for analyzing compliance: whether inventor considered particular mode superior to all other modes, and whether inventor's disclosure is adequate to enable phosita to practice best mode of invention
need not explicitly say “this is the best mode”
patentable subject matter and utility
patentable subject matter: 35 usc 101: patent available for anyone who invents/discovers any new/useful process/machine/manufacture/composition of matter, or any new/useful improvement thereof
broad language; covers almost anything made by man (but not a claim covering a human being)
only things excepted are laws of nature, physical phenomena, abstract ideas
process: act or series of acts performed upon subject matter to be transformed/reduced to different state: patentable if new/useful
difference from unpatentable mathematical formula? employing formula in process is fine, whereas formula itself is not
activity that occurs after formula yields solution doesn't transform unpatentable formula/principle into patentable process
limiting abstract idea to certain applications (e.g. mathematical formula to calculate financial stats) doesn't make it patentable (bilski v. kappos)
to transform unpatentable natural law into patent-eligible process, must do more than just state law and say it should be applied; can't just combine observations of correlative natural processes to create patentable subject matter without adding features that make processes genuine applications of those laws (mayo v. prometheus labs)
business method patent: claims method or corresponding apparatus for performing data processing or other operations used in practice/administration/management of financial product/service, excluding patents for technological inventions
line drawing problems for genetically modified organisms and computer-implemented processes
GMOs: as long as it is product of human ingenuity it is patentable (diamond v. chakrabarty)
computer implemented processes: as long as process is transforming article into a different state it is patentable (diamond v. diehr)
by contrast, just doing calculations using algorithm isn't patentable
utility: claim is unpatentable unless it is useful
practical utility: is there specific and substantial utility disclosed?
process that only yields test substance (e.g. process that yields steroid that inhibits tumors in mice but hasn't yet been proven in humans) isn't sufficiently useful (brenner v. manson)
most often applied in biomedical and chemical fields to specimens that have not yet found a use; most other patents demonstrate usefulness easily
patent does not give exclusive right to figure out uses for new substance; only gives patent for substance that has a use
beneficial (moral) utility: is it socially good or bad use?
deception doesn't make a product unpatentable; altering one product to look like another is sufficient benefit to satisfy utility requirement (juicy whip v. orange bang)
not patent office's job to police deceptive trade practices
policy justification: precise delineation of claim
novelty and statutory bars
35 usc 102 (1957): person shall be entitled to patent unless:
invention was know
ise invalidating public use/sale by showing that delay is occasioned by bona fide effort to perfect invention
test is whether primary purpose of inventor at time of public use/sale was to conduct experimentation; doesn't matter what stage of development invention was in at the time
limited to cases where testing performd to perfect claimed features or perfect features inherent to claimed invention
subjective intent doesn't establish experimental nature of activities; requires objective evidence
non-exhaustive list of factors:
necessity for public testing
control over experiment retained by inventor (dispositive)
nature of invention
length of test period
whether payment was made
whether there was secrecy obligation
whether records were kept (important)
who conducted the experiment
degree of commercial exploitation during testing
whether invention reasonably requires evaluation under actual conditions
whether testing was systematically performed
whether inventor continually monitored invention during testing (important)
whether customers were aware that sale is in connection with experimentation (dispositive)
america invents act: main change: from first-to-invent to first-to-file
no more geographic differences in 102a and 102b
retains concepts of printed publication, public use, on sale; adds category of “otherwise available to the public”
nonobviousness
35 usc 103a: patent may not be obtained, even if invention isn't identically disclosed/described under 102, if differences b/w prior art and subject matter to be patented are such that subject matter as a whole would have been obvious at time of invention to phosita in the art to which invention pertains
purpose: socially wasteful to pay patent-backed premium for innovation we can get for free in same amount of time as a matter of course; no need to incentivize that which will be developed anyway; greater social costs to allow people to enforce rights against others who come up with the same obvious thing that they did
test to determine obviousness (graham factors):
determine scope/content of prior art
ascertain differences b/w prior art and claims at issue
resolve level of ordinary skill in pertinent art; use this as background to determine obviousness
can take into account commercial success, unsolved needs, failure of others
teaching, suggestion, or motivation test (apply flexibly): patent claim is obvious if some motivation or suggestion to combine prior art teachings can be found in prior art, nature of problem, or phosita knowledge
determined by objective reach of claim; patentee's motivation irrelevant
if there was known problem w/ obvious (to phosita) solution at time of invention that patent tries to claim, it is too obvious
phosita also has ordinary creativity; if he would pursue known option that leads to anticipated success to solve problem, it is product of common sense, not innovation (can show obviousness by showing that combination of elements was obvious to try)
