Patent Law Outline
Torrance
Spring 2010
Code Sections
· §101 – Sets forth the “useful”/UTILITY REQT for patent protection
o “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, SUBJ to the conditions and REQTS of this title.”
· §102 – Novelty
· §102a – the essential 1st-to-invent rule; an inventor is entitled to a patent unless “the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.”
· §102b – Public Use Bar; “Printed Publication” factors (p. 229, casebook)
o “Printed” and “publication” explanations – p. 233, casebook
o §102b BARS a patent for any invention “in public use or on sale in this country, more than 1 year prior to the date of the APP for patent in the U.S.”
§ Public Use (Bar) – §102b precludes a patent for any invention in public use in this country more than one year before its filing date
§ On Sale (Bar) – Inventor will be barred from obtaining patent rights if he or 3rd party sold or offered for sale the claimed invention > 1 yr before the patent APP is filed.
· 2 part test for the on-sale bar:
o The invention must be the SUBJ of a commercial offer for sale
o The invention must be ready for patenting at the time of that offer
§ Reduced to practice
§ Enabling DESC
· Another Bar: Abandonment
o §102c – inventor is not entitled to a patent for an invention if he abandons the invention
· Another Bar: Delay
o §102d – an inventor is not entitled to a patent for an invention if “the invention was 1st patented or caused to be patented, or was the SUBJ of an inventors’ certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the APP for patent in this country or an APP for patent or inventors’ certificate filed > 12 months before the filing of the APP in the U.S.”
· §102e – to preempt a later patent APP on the same SUBJ matter under this SXN, the earlier APP must have appeared publicly as a published APP or as an issued patent (Atlas Powder Company v. Ireco Incorporated)
o focuses on the disclosure of a patent being the prior art
o Proving anticipation (lack of novelty) REQS the challenging party to show that each and every limitation/element of the claimed invention is disclosed – either expressly or inherently – in a single prior art reference; and the reference must enable the claimed invention so as to place the invention in the possession of a PHOSITA.
· §102f – prevents a putative inventor from patenting SUBJ matter that he didn’t truly invent
· §102g – (Prior Art and Interferences) – prevents the patenting of SUBJ matter already invented by another
o focuses on the claimed invention/inventive activity as the prior art
o §102g1 provides the statutory basis for an interference – an administrative proceeding determining which of 2 pending patent APPS (or which of a pending APP and an issued patent) represents the work of the first inventor… an interference determines inventive priority before the Patent Office
o §102g2 provides the statutory basis to invalidate a patent basis on another’s prior invention of the same SUBJ matter (foundation for so-called “secret” prior art)
o The inventive activity must meet 2 conditions before it can be used as prior art:
§ 1 – The activity must occur in the U.S.
§ 2 – It must be continuously used (not abandoned)
· (IMP distinction b/w §102a and g2… g2 also does NOT have a publicity REQT as does 102a… so a trade secret can serve as §102g2 prior art)
· Nonobviousness: §103a: “A patent may not be obtained though the invention is not identically disclosed or DESC as set forth in SXN 102 of this title, if the DIFFs b/w the SUBJ matter sought to be patented and the prior art are such that the SUBJ matter as a whole/ would have been obvious/ at the time the invention was made to PHOSITA to which said SUBJ matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”
o KSR – (TEST FOR OBVIOUSNESS) …refined factors in Graham v. John Deere
· §103c – joint research exception
· §112 – “The specification shall contain a written description of the invention…”
o 3 REQTS/components of disclosure:
§ 1. Enablement
· TEST: REQS that the specification, when filed, contain disclosure sufficiently clear and complete to enable a PHOSITA to make and use the invention, as claimed w/o undue experimentation
§ 2. Written DESC
§ 3. Best Mode
· Two-Part Test: Patentee need only disclose any way of practicing the invention that he considered better than any other at the time of filing:
o 1. The SUBJ belief/knowledge of the inventor of a better method of practicing the claimed invention at the time of filing
o 2. Objective enablement of best mode/Concealment of that better method
§ Definiteness
· Test;§102 – Patent act REQS that the “claims particularly point out and distinctly claim the SUBJ matter which the applicant regards as his invention.”
· The basic rule: a PHOSITA must be able to understand the claims when read in light of the specification. (Orthokinetics, Inc. v. Safety Travel Chairs, Inc.)
· 112, paragraph 6 – Means Plus FXN claims
· 116 – joint inventors
· 131 allows inventors to EST a date of invention using inventive activities in certain foreign countries as well as the U.S.; Rule specifies 2 categories where an affidavit cannot antedate a reference: interferences to DET priority over the same SUBJ matter and statutory bars
· 131 affidavit must possess SUFF content to antedate an anticipatory reference
· §§161-164 – plant patents
· §§171-173 – design patents
· 154(1) …the RIGHT to EXCLUDE
o “Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.”
· 154b – Patent term extension
· 271(a) “…if you do these things.. you infringe!”
o Except as otherwise provided in this title, whoever w/o authority makes, uses, offers to sell, or sells any patented invention, w/in the United States, or imports into the United States any patented invention during the term of the patent, therefore, infringes the patent.”
· §271 b and c – indirect infringement
· 273 – first investor defense
· 282 – Presumption of validity; defenses to patent infringement
· 283 – Remedies: Injunctions
· 284 – Remedies: (Money/Punitive) Damages
· 285 – Authorizes payment of ATTY fees to prevailing party
Summary/Table of Contents
History and Architecture of the Patent System pp. 1-48 p.12
Disclosing and Claiming the Invention (I) pp. 49-107 p.12
Adequate Disclosure §112 p.12
I. Introduction
a. §112 – “The specification shall contain a written description of the invention…”
i. 3 REQTS of disclosure:
1. Enablement
2. Written DESC
3. Best Mode
a. Definiteness
II. Enablement; 1st REQT of Disclosure, §112 p.12
a. PURPOSE: ensures adequate disclosure (quid pro quo w/ society) and ensure claim scope is commensurate w/ disclosure
b. TEST:
i. REQS that the specification, when filed, contain disclosure sufficiently clear and complete to enable a PHOSITA to make and use the invention, as claimed w/o undue experimentation
ii. 3 parts: p.12/13
1. (Enablement is judged) At the Time of Filing
2. Scope of Disclosure
3. Without Undue Experimentation
III. Written DESC (Basics); 2nd REQT of Disclosure, §112 p.14
a. “Possession” of the Claimed SUBJ Matter
i. TEST: there must be adequate disclosure to show possession of the claimed SUBJ matter at the time the APP was filed
IV. Best Mode; 3rd REQT of Disclosure, §112 p.15
a. Two-Part TEST: Patentee need only disclose any way of practicing the invention that he considered better than any other at the time of filing: p.16
i. The SUBJ belief/knowledge of the inventor of a better method of practicing the claimed invention at the time of filing
ii. Objective enablement of best mode/Concealment of that better method
Claims p.16
I. Introduction
II. Parts of a Claim p.17
III. Special Claims Formats p.18
a. Means-Plus-FXN (Cross Reference: Enforcing Patent Rights I)
i. Section 112, Paragraph 6
IV. Definiteness – part of Best Mode, I believe p.18
a. TEST
i. §102 – Patent act REQS that the “claims particularly point out and distinctly claim the SUBJ matter which the applicant regards as his invention.”
ii. The basic rule: a PHOSITA must be able to understand the claims when read in light of the specification. (Orthokinetics, Inc. v. Safety Travel Chairs, Inc.)
Eligible Subject Matter and Utility (I) pp. 109-185p.19
Nutshell, Chapter 4, p. 64
I. Introduction
a. Section §101
i. Sets forth the “useful”/UTILITY REQT for patent protection
ii. TEST: In considering whether a patent complies w/ 101, the proper analysis REQS determining p.20
1. 1. Whether the claimed invention possess utility; and
2. 2. Whether the claimed invention constitutes statutory SUBJ matter, that is, whether it is a “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” (101) or whether the claimed invention instead falls w/in the judicially created “products of nature exception to patentable subject matter, i.e., “laws of nature, natural phenomena, and abstract ideas” (…unpatentable SUBJ matter, above) Chakrabarty
II. Enumerated Patentable Classes
a. §101 allows patentability of
i. Processes
ii. Products
iii. Manufactures (STH made)
iv. Compositions of matter
III. Unpatentable SUBJ Matter
IV. Utility Basics p.21
a. Utility REQTS derives from 2 sources
i. US Const. Art. 1, §8, cl. 8
ii. §101
V.
Activities of 3rd Parties – can create statutory bars precluding an inventor from procuring a patent to his invention
c. Motionless Keyboard v. Microsoft
i. Factors for judging public use: p.34
1. Secrecy
2. Control
3. Commercial PURPOSES
III. On Sale (Bar) p.34
a. Definitions
i. Inventor will be barred from obtaining patent rights if he or 3rd party sold or offered for sale the claimed invention > 1 yr before the patent APP is filed.
b. 2-part TEST p.35
i. Commercial Offer for Sale
1. Turns on whether the invention was the SUBJ of a commercial OFFER for sale.
ii. Ready for Patenting (or Conceived)
1. At least 2 ways of satisfying REQT: p.36
a. 1. by proof of reduction to practice before the critical date
b. 2. by SUBJ to an enabling disclosure (i.e.: by proof that prior to the critical date the inventor had prepared drawings or other descriptionsof the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
IV. Experimental Use (or sale) Negation p.36
V. Other Statutory Bars p.38
a. Abandonment §102c
b. Delay §102d
Nonobviousness pp. 321-385 p.38
Nutshell, Chapter 8, p. 144
I. Legal test for patentability in this SXN: the inquiry turns on whether the claimed invention “would have been obvious.”
II. Modern Nonobviousness p.40
a. Attempted to establish a more OBJ test
i. 35 USC §103
1. Compare
a. Claims
b. Relevant prior art
2. Standard
a. PHOSITA
3. Irrelevant
a. Manner in which an invention is made
III. Prior Art
a. §102 defines the categories that supply that “prior art”; statements and admissions by the patentee or applicant provide another less common, even if potent, source of knowledge
IV. Flexible Nonobviousness
a. The CAFC developed the “TSM” test: p.42
i. T – Teaching
ii. S – Suggestion
iii. M – Motivation
V. KSR Nonobviousness Analysis
a. (TEST FOR OBVIOUSNESS) CRT/patent examiner/PHOSITA/lawyer will look to the following in determining whether there “was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”: p.42
i. Interrelated teachings of the patents
ii. Demands known to the design community and marketplace
iii. Scientific literature and market demand
iv. Background knowledge of the skilled artisan, as well as inferences and creative steps he would employ
v. Any need or problem known in the field of endeavor, and
vi. Uses of items beyond their primary PURPOSES
Enforcing Patent Rights (I) pp. 387-430 p.43
Nutshell, Chapter 13, p. 331
I. Infringing Activities
a. 154(1) …the RIGHT to EXCLUDE
b. 271(a) “…if you do these things.. you infringe!”
II. Introduction to Infringement
a. Establishing infringement REQS the interpretation of the “elements” or “limitations” of the claim and a comparison of the accused product w/ those elements as so interpreted.
i. Infringement entails a 2-step analysis: p.44
1. CRT construes the claims (claim scope is 1st determined)
2. Fact finder compares those construed claims to the accused product or process and DET whether the accused product infringes the patent claims at issue
III. Types of Infringement: p.44
a. Direct infringement – patentee brings an AXN against a D who himself is committing acts that infringe one or more patent claims
i. Two Types:
1. Literal infringement p.44
a. 271(a) “…if you do these things.. you infringe!”
2. Non-literal infringement/DOCTRINE OF EQUIVALENTS (DOE) p.45
Modern DOE p.
