Joe Miller- Patents- Fall 2015
Introduction
Patents are protection for intellectual property. It is a legislative right to exclude in an intangible product of the human mind.
Covered under the Patent Act.
Trial and error testing would be the process of conceiving an idea.
-The idea/solution is found once it works.
Facts: Applegate v. Scherer
D sent letter to P saying they had a solution for P’s problem. P argues that no invention is had if there is no knowledge that it will work. D thought up the formula but P verified it actually worked. Who gets the patent?
Where an inventor is one who conceives a solution to a problem.
Facts: Gambro Lundia ABV v. Baxter Healthcare Corp
D has dated memo in file. Doesn’t corroborate D’s claims on the patent.
Where there must be clear and convincing evidence to show that the idea and timing are so specific that it can be readily perceived there is no dispute as to the conception of an idea.
Conception is more important because it rewards the inventor instead of punishing him if the tester of the idea was credited with the idea. This could force the inventor to partner with someone to get patent. System is designed to reward those who are not in the field as a matter of routine because they are most likely to push boundaries and discover new ideas.
Licenses can be granted for permission to make, use, sell, import, etc. the patented invention. Royalties will be paid.
Blocking patents: makes regular chair patent not be able to make rocking chairs.
Patents expire 20 years after filing. Really 17 years because of 3 years of filing time usually.
Sources of Patent Law: exclusively federal
1. Constitution, Article 1 Section 8
2. Fedearl Statutes and Regulations
3. Case law
Courts typically defer to administrative agencies on their decisions. However the PTO is thought not to have this deference like other agencies when filling in gaps.
Federal Circuit hears all patent cases. These are appeals from the district courts which are appeals from the agency.
This keeps patent law handled the same way and provides uniformity for claimants.
PTO cannot appeal the allowance of a patent.
Many patents expire because the lack of payment for maintenance fees and many are unenforced.
District courts handle enforcement, validity, and infringement. Both parties argue in court when you sue on your patent. Infringers argue when the patent is invalid.
Patent prosecution: interaction between applicant and PTO. NO one else can argue whether patent should be granted etc. Very unique because patents affect many people but no one else has a say. Patent applications are not heavily scrutinized at this level.
2. Patent Claims
Claim: precision drafted, single sentence definition of the patent owners rights to exclude others, give verbal boundary of property right. It must point out and distinctly claim what the patent o
nt claim, it should be preceded by or introduced by “a”.
Facts: In re Packard
PTO board held claims indefinite due to words meaning being unclear. Claim for a coin change holder.
Where once an applicant is notified of an insolubly ambiguous rejection or ambiguity of a claim, the burden shifts to the applicant to rebut the prima facie case with evidence/argument.
-The applicant can prove there is no problem with claim or applicant can add new language by amending. Cant add more supporting stuff to the claim or will lose the original filing date. Cant talk about another topic when the PTO has problems with the claim language.
Facts: Pacing Tech v. Garmin
P alleges that D’s fitness watches and microcomputer used by runner and bikers infringe P’s patent. P had limited their patent by disavowing certain language.
Where a disavowal of a claim will limit that claim to be what is included within that language and the invention will be limited by that disavowal and the patent scope will not include accomplishments outside that disavowal.
-Language has the same meaning it would to a PHOSITA, otherwise be your own lexicographer and give it some other meaning. If you disavow a claim, the claim language covers less.
