A. Theory for Patent Protection
1. Constitution: Helps us understand the incentive basis for patents. Worried people won't create intellectual property w/o property rights.
2. Incentive to invent: Competition breeds innovation
3. Disclosure theory: incentivize inventors to share inventions with the world
4. Commercialization: selling it on the market is better for the public
5. Prospect Theory: no duplication of effort in research.
6. Trade Secret Law: Patent protection is a necessary response to trade secret law by giving inventors a reason to not use TS law and announce to the world what your invention is.
a. Let others benefit from invention.
b. Avoids duplicative research.
7. Competitor Incentives: Not trying to focus on rewarding the inventor, but trying to take some things and put them off limits to rivals to get rivals to work harder to come up with new ideas.
Counterarguments to Patent Protection
1. Prevents innovation
a. Tragedy of the anti-commons: Everyone patents a piece, nobody can put them together.
2. Computer science argument: We file patents defensively bc we're afraid someone else will take the invention from us. Don't want legal regime to be involved.
3. Many times it is clear that the party holding patent didn't contribute anything to world. Came up with invention and leaned back to wait for somebody else to come up with it, and took their money.
Patent Law Theory
1. Public Goods
a. Non-rivalrous: anyone can make use of the good without diminishing it for others (lighthouse)
b. Rivalrous: using the good uses it up its consumed (food, etc)
c. Non-excludability: once you make it available to one person, everyone can use it (lighthouse)
d. Excludability: can refuse to sell to certain people, no free riding problem (food)
2. Inventions are non excludable and non rivalrous.
1. Without the patent, people can copy it at their own will.
2. Arrow’s paradox: licensing is really hard to do without a patent.
Marginal and Fixed Costs related to patents
1. Fixed: cost of the first invention
a. Research, manhours, etc.
2. Marginal: incremental cost for the second copy of the first invention
a. Materials for manufacture, etc.
3. Invention is a fixed cost, inventor has to front that cost. Patents give aid to those spending $$$ on inventing
Reading a Patent
1. Bracketed numbers: International code helps non-English readers know how to read a patent.
à ex.  = inventor name
2. Assignee: Entity with rights to patent.
3. Filing date: Can be important for rights.
4. ,, classify patents into families so we know what prior art to compare it too.
5. References cited: Prior art this patent had to overcome. Not required to provide this info to patent office.
B. The Patent Application
Requirements for a Patent:
§ 101: Patentable subject matter – it must fall into the scope of what can be patented; device, process, machine.
§ 101: Utility – It must be useful
§ 102: Novelty – It must be new and not made/sold more than a year before attempting to obtain a patent
§ 103: Non-obviousness – Most difficult – Tests if it is a big enough technical advance to warrant a patent
§ 112: Specification – Requires disclosure of full process so those “skilled in the art” of the invention can create and use the device after the patent expires.
§ 112 Specification. Must contain:
6. The Claiming Requirement: A patent must include one or more claims which clearly and distinctly describe the invention, setting forth its constituent elements. This establishes the scope of the patent.
7. The Enablement Requirement: The applicant must describe how to make and use the invention with sufficient clarity, precision and detail to enable a person skilled in the relevant art to make and use it without undue experimentation.
8. The Best Mode Requirement: Applicant must set forth the best mode that she contemplates of carrying out her invention as of the filing date.
a. It must be established whether at the time of the filing, the inventor knew of a mode of practicing her invention that she considered to be better than any other.
b. If so, did she disclose it adequately to enable on skilled in the art to practice it.
Basics of Drafting a Claim: Claims aren't about disclosure as much as defining the property right inventor will get. Patent application as whole is about disclosure. Ask if you are covering too much or too little.
9. Lots of discretion
a. Can coin new terms
b. Constrained by § 112. Must be 1 sentence.
c. PTO “manual of patent examination procedure” gives details of little nuances.
d. In general, there are conventions but not firm rules on language of patent.
10. Elements of a claim
a. Preamble: “A writing tool”, “A composition of matter”, “A method of…” Provides a general introduction. Is not limiting on the rights of the inventory unless it breathes “life and meaning” into your claim.
(A) Not limiting: “A diagnostic medical imaging system”
(B) Possibly limiting: “A diagnostic medical imaging ultrasound system capable of being housed on a portable support
b. Transition: 3 common ones
(A) “Comprising”: Broad. If elements of patent are A B and C, and someone does A B C & D, there is infringement. (includes but is not limited to…)
(B) “Consisting of”: Narrow. Case where what is cool about invention is you did it in only X elements. (includes and IS limited to…)
(C) “Consisting Essentially of”: Intermediate. If an invention consists essentially of elements A, B, and C, the claim would cover a variant having the additional element D only if D did not make the variant essentially different from the claimed invention.
c. Body: Introduce specific limiting elements, i.e., what makes up your invention.
(A) Usually want each element introduced in a new clause
(B) Must be clear what the relationship is between elements.
Claim Formats: 2 formats, independent and dependent
d. Independent & Dependent claims: Independent claims do not refer to any other claim(s). Dependent claims do.
(A) Subsequent claims narrows the scope of the patent as set out in the first claim.
Ex. A windmill according to claim 1, wherein the wind-catching device is a set of rigid blades.
(B) Advantage of dependent: Form of insurance. If patent office grants a broad claim and in later litigation the broad claim is declared invalid, no recourse. Narrower dependent claims protect against invalidation. Validity of dependent claims is separately assessed and may be upheld even if the claim it is dependent on is struck.
e. Functional Claims “means for”: Allows for equivalents to be covered for a function
(A) Ex. A hammer comprising a head, a handle, and a means for attaching the handle. Covers the means described in specification and equivalents.
(B) Have to be careful, court may not agree on what “equivalent” is. For example glue wouldn't be equivalent for a nail.
f. Product by Process: Something you created that you don't know how to describe but you can describe the process by which you yield it.
(A) Limited protection: Used to be you got rights to product regardless of process. Now, fed cir says all you get is product as created by your process. If someone comes up with another way, that's fine.
(B) Ex. An insulating material prepared by a process comprising the steps of…
g. Jepson Claim: Way to specially point out that you are trying to improve an existing invention. “An improved X, the improvement of which is Y.
(A) Case where preamble is limiting by design, conceding away X.
(B) Makes PTO's job easy – claim concedes away a lot of the prior art.
(C) Some countries require or strongly favor it, so you might want to do this claim everywhere. PTO may push you to.
Strategy for Scope: Only time you need something narrower is if your broad claim as whole gets preempted by prior art. Ex. softwood device vs. cedar device.
II. Patent Eligible Subject Matter
O reilly v Morse: Can’t patent natural law. Must be a manmade principle. Cannot patent the underlying scientific principle. Broad rights destroy downstream innovation, must patent only the narrowest scope of the invention.
Law of Nature exception: how much of the invention is man made v. how much is just putting naturally occurring acts in nature together. Also look at usefulness.
Diamond v. Chakrabarty (166) Broadens the scope
Egyptian Goddess v Swisa: ordinary observer test/ Point of novelty test
· The accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.
V. Claim Construction
Unique Concepts v. Brown (78)
Court holds you to plain language of your claims, can’t try to be too confusing or mis-descriptive to cover more ground
Phillips v AWH Corp (61) (Written description/specifications is best evidence for claim interp – not dictionary)
When evaluating infringement, CT looks at:
Objective BASELINE – customary meaning of word to person skilled in the art
The claim language itself – Intrins.
Look to Claim Interpretation Canons
The specification in the written description – Intrins.
Should be used as the highest standard but be careful not to read in limitations
The prosecution history of the patent – Intrins.
Should look for amendments, narrowing language, but it is a negotiation process
Expert and inventor testimony, dictionaries and treaties – Extrins.
Battle of Experts, unnecessary broadening/narrowing all dangerous here – TX digital
*Rely on extrinsic evidence only if the intrinsic evidence is ambiguous
Enablement: requires inventor to describe invention in details so that one skilled in the art can make it without undue experimentation
Written Description: Inventor must highlight or describe what she claims and claim what she highlights.
Claim Definiteness: Inventor must claim it in such a way that others can easily discern the boundaries of her legal rights
Best Mode: Must disclose best mode for practicing the invention/art
· Written description of invention (claims) must be sufficient for a PHOSITA to remake the invention without undue experimentation.
· Must determine the knowledge, experience, education, formal definition of the art
· Cant enable result of invention without claiming the actual invention (need a narrow scope)
· Enablement is determined at the priority date of application
· Claim construction is determined at the issue date of the patent
· Constructive reduction to practice requirement: never have to actually make/use your patented product
Claim Scope Cases:
O reilly v. Morse (92)
Consolidated Electric Light v McKeesport Light Co (96)
Undue Experimentation Cases
Cedarrapids v Nordberg (114)
Automotive Technologies International v BMW of North America (116)
B. Written Description
· Separate from enablement requirement. Purpose is to provide adequate disclosure of the invention.
Ariad Pharma v Eli Lilly (126)
Gentry Gallery v Berkline Corp (137)
· Inventor must know of the best mode at the time of filing. §282: presumption of validity defenses, amended by AIA so you can’t raise a best mode defense anymore.
· Also need definite claims, need clear boundaries without subjectivity
Datamize v Plumtree Software (142)
Aesthetically pleasing is indefinite, there is no meaning of this term to a PHOSITA because it depends.
Star Scientific v FJ Reynolds Tobacco (147)
Anaerobic condition ‘ indefinite because there are variations of anaerobic. Court says it’s definite because a PHOSITA would understand the required degree of anaerobic. It’s okay to look at specs when figuring out indefinite terms (not right away though, remember order of claim construction)