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Intellectual Property
University of Kansas School of Law
Torrance, Andrew W.

Intellectual Property
Torrance – Fall 2005


Patents 2
patentable matter 2
statutory bars 3
application 5
infringement 6
defenses and remedies 7

Copyright 9
copyrightable matter 9
ownership and rights 11
infringement 15
defenses and remedies 16

Trademark 18
trademark requirements 18
requirements for protection 20
infringement 21
defenses and remedies 22

Trade Secret 24
unfair competition 24
right of publicity 25

Copyright v. Patent Chart 26

Patent Act of 1952 – 35 U.S.C.

Patents are available for inventions of applied technology – including machines, processes, and compositions of matter – patents endure for 20 years following the date of application – patent grants the user the right to exclude other from making, using, selling, offering to sell, or importing the patented invention. – all issued patents can be found at

I. Patentable Subject Matter – § 101 – (1) Products, including machines, compositions of matter, or manufacture. (2) Processes (method patents) a mode of treatment to get a certain result. Anything under the sun made by man—but not laws of nature, natural phenomena, or abstract ideas. Things that can be patented include human genes, cells, and proteins, as well as medical procedures. Section 101 has three requirements for something to be patentable:

a. Utility – must be useful – the invention doesn’t have to better than anything existing, just different (Lowell v. Lewis pump case) – minimal requirement of a concrete benefit – very low standard; easy to satisfy – when is there no utility? Only if you are on all fours w/ Brenner v. Manson (the useless steroid that “furthered research” case) – also related to utility, a patent must be operable (a voting machine that counts 99% of votes correctly is operable)

b. Novelty – defined in § 102 – the invention must be new – to find if something is novel, you have to make two inquiries: (1) What is the current state of the art? You look at the prior art. (2) Does the prior art anticipate the claimed invention? All relevant prior art must be disclosed.

General rule of novelty – § 102(g) – a person shall be entitled to a patent unless before the applicant’s invention thereof, the invention was made in this country by another – if the first inventor has abandoned, suppressed, or concealed the technology at issue, then he has forfeited special status – in determining priority of invention, you look at conception, reduction to practice, and diligence and the times b/t them. A completely private invention may serve as prior art to prevent a new patent under § 102(g) unless it has been suppressed, abandoned, etc. Note that a trade secret will serve as suppression.

Application of Borst (classified nuclear prior art case) – “prior knowledge of a patented invention would not invalidate a claim of the patent unless such knowledge was available to the public” – but you don’t need an actual reduction to practice; just idea will do

c. Originality – patent will be given to the originator/inventor – issue of conception – the person who conceives (not the one who bring to fruition) is the inventor. Conception in your mind’s eye w/o necessarily reducing it to a physical state still makes you inventor.

Diamond v. Chakrabarty (oil eating bacteria case) – Even living things are patentable as long as they are newly made by man.

Diamond v. Diehr(rubber curing ovens case) – The fact that the invention used a computer and an unpatentable mathematical algorithm doesn’t mean the whole process can’t be patented. The process was transformative of rubber.
State Street Bank v. Signature Financial (hub and spoke financial data processing case) – the machine-using process here is patentable b/c it produces a tangible beneficial result, even if that result is only expressed in numbers, prices, and just plain data. Whether something is patentable subject matter depends on its practical utility. The process was transformative of data. This case is the originator of business method patents.

II. Statutory Bars to Patents Issuing – § 102

A. Public use – § 102(b) – denies a patent were the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country for more than one year prior to the date of application – even a limited use that results in negligible exposure to the public counts. Even an inventor’s gift of one sample, which is then used in private counts as public use.

When an inventor himself uses the invention commercially before the application, even in secret, it is considered a public use and thus prior art. But if a third party makes secret use of the invention, then it is not a public use as to a subsequent inventor of the same thing. Rationale: inventors could delay filing and extend their patent rights otherwise.

B. On sale – § 102(b) – patent barred if invention is placed on sale in the U.S. by anyone more than one year before the patent application. Any sale or offer, even if private, and even if not eventually sold, will bar. An offer to sell the patent rights don’t count, only offers to sell the thing itself or commercial embodiments of the thing itself.

Pfaff v. Wells Electronics (Texas Instruments ask guy for invention) – does the on sale bar apply to inventions that aren’t reduced to practice? Test: (1) the product must be the subject of a commercial offer for sale, and (2) the invention must be ready for patenting – (a) the invention is either already reduced to practice, or (b) there are drawings or other plans sufficiently detailed to allow someone skill in the art to make it.

C. Experimental use – is not a public use – if a use is not commercial and is intended to make sure the product works for its intended purpose, it is experimental – you look at the totality of the circumstances, including number of prototypes and duration of testing, attention to records during testing, existence of confidentiality arrangement, receipt of commercial advantage by patentee, control over testing by inventor, tailoring of testing to specific features of invention, and whether the testing could have been carried out privately. (See TP Laboratories v. Professional Positioners)

D. Abandonment – § 102(c) – bars a patent were patentee has abandoned the patent – intentional surrender to the public – express dedication to the public.

E. Delayed U.S. filing – § 102(d) – bars a patent when: (1) when an inventor files a foreign application more than 12 months before a U.S. application, and (2) a foreign results prior to the U.S. filing date.

F. Prior Invention – § 102(a) – an invention known or used in this country, or patented or described in a printed publication in this or a foreign country before the invention date thereof by the applicant, may not be patented.

1. Known or used – requires some type of public knowledge of first invention b/f second is rejected. A first inventor who keeps his invention as a trade secret won’t preclude a second inventor’s patent. By keeping something secret, it is not known.

2. Invention date – is found by looking at (§ 102(g)) conception, reduction to practice, and diligence. Contested patent will be granted to the first inventor to reduce the invention to practice – unless the invention was conceived first by rival and that rival exercised diligence in reducing the invention to practice. (The rest of the world uses the first to file system to decide who gets patent)

a. Conception – the mental act of invention – a definite and permanent idea of the complete and operative invention as it is to be applied in practice – must include every feature of the invention – inventors must prove convention date w/ models, documentation, and third party testimony

b. Reduction to practice – a demonstration that the invention is suitable for its intended purpose – actual reduction to practice is the construction of a working model, while constructive reduction to practice is filing an application w/ the PTO

c. Diligence – continuous and reasonable efforts toward the reduction to practice – an inventor who is first to conceive, but last to reduce to practice, will

C. Application – examiner will conduct a search of prior art – then examines the app. – office action sent to applicant explaining issuance or rejection – applicant may respond or may amend – if unconvinced, a second office action (final rejection) may issue – applicant can then abandon, file a continuing application, or appeal.

D. Reissue – § 251 & 252 – allows inventors to correct problems in issued patents – done especially before court litigation – reissue proceedings are open as opposed to the secrecy of initial apps.

E. Reexamination – § 302 – 307 – third parties can request a reexamination by pointing to prior art that was not b/f the PTO during prosecution. If it finds this is valid prior art, the PTO will reopen the prosecution.

VI. Infringement– § 2711(a) – a question of fact – if someone uses, sells, etc. any of the things that are specified in the claims of a patent, then there is infringement.

A. Literal infringement – when the accused technology embodies each and every limitation of the claim – every element in the claim must be found in the defendant’s product to find literal infringement.

B. Infringement under the doctrine of equivalence – to avoid allowing others to make similar inventions with narrow differences that exist simply to avoid the claims of other patents – if an accused infringement present unsubstantial differences from the claimed invention, then infringement exists.

For purposes of defense against infringement the Foreseeability Criterion requires the patentee to carefully draft the claim so as to capture all reasonably foreseeable ways to practice the invention. The doctrine of equivalents will not rescue a claim drafter who does not provide such notice. Johnson & Johnston v. R.E.S.

Graver Tank v. Linde Air (welding flux) – although the matter used to make the fluxes was different, the effect was the same, and so infringing – Standard: there’s infringement if another device performs substantially the same function, in substantially the same way, to obtain the same result.

Warner-Jenkins v. Hilton Davis (dyes process) – Test of equivalence is one of insubstantial differences – equivalency is an issue of fact – intent is not an element of infringement under the doctrine of equivalence – Test for insubstantial differences: 1) getting the same function in the same way (Graver), 2) copying, 3) interchangeability, and 4) (non-)obviousness.

Limitations to doctrine of equivalence:

1. The all elements rule – Each claim isn’t considered holistically, but element by element. Each claimed element must be present in the infringing device—even equivalently.

2. Prosecution history estoppel – Prevents patentees from recapturing subject matter surrendered during a prosecution

3. Prior art limitations – equivalence cannot be used to captured an accused technology that lies in the prior art – if interpretation of a claim would reach not just an infringing device, but something in the public domain as well, a court won’t apply equivalence

VII. Indirect Infringement – there must also always be a direct infringement by someone else

Active inducement – § 271(b) – when one knowingly encourages another to infringe or aids in that infringement – usually selling components w/ instructions for making infringing combination