Select Page

Intellectual Property
University of Kentucky School of Law
Weinberg, Harold R.

Intellectual Property

Assignment 14 – Patent Protection Introduction

Dimensions of IP

Requirements to obtain
Requirements to retain
Exceptions to protection
Ease of enforcing
Available remedies
Available defenses

Utility Patents
Patent Act § 271 – Infringement of Patent

(a) whoever without authority makes, uses, offers to sell, or sells and patented invention, within the US or imports into the US any patented invention during the term of the patent therefore, infringes the patent

There is NO ignorance defense. You can’t claim that you didn’t know something was patented

In order to obtain a patent your invention must be:

Novel; and
Non-obvious (hardest)

So much harder that to get a copyright or trademark

Copyright – write something down
Trademark – use something with a product

Article I, Section 8, Clause 8 of the US constitution – Copyright Clause – creates the constitutional basis for patent law

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries

Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

1) literary works;
2) musical works, including any accompanying works
3) dramatic works, including any accompanying music
4) pantomimes and choreographic works;
5) pictorial, graphic, and sculptural works;
6) motion pictures and other audiovisual works;
7) sound recordings; and
8) architectural works


The term trademark includes any word, name, symbol, or device, or any combination thereof used to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source or the goods, even if that source is unknown.

P. 91


The primary justification for patents is to encourage inventive activity…i.e. social/economic growth

Additionally, if there wasn’t a patent system the inventor would not be able to recoup any expenses. Competitors didn’t have the costs of inventing so they can undercut the inventor. Thus, discouraging inventing things (Free Rider Theory)

This is disputed by the First Mover theory – if you are the first to enter a market, it will take time for others to enter the market. This allows you to capture a large part of the market, before competitors can enter.

They also force full-disclosure.

Generic Drugs are a great example of the benefits that occur as soon as a patent runs out

Property rights are secured

You can’t be overly broad – the patent will be invalidated.


However, they do make products more expensive in the short run. They can charge a higher fee than would exist if there was fair competition.

They are occasionally compared to monopolies.

Don’t take this too seriously. This is because the usefulness of the invention is very low. The only rule for inventions is that they do something useful; it doesn’t matter if they do it in a better way. These patents don’t really give monopolies over entire industries, nor do they guarantee that the patentee is going to be making money of it.

1. A Sample Patent

The examiner looks at prior art in order to decide if it should be given

Also looks at questions of usefulness, originality, novelty, and nonobviousness

“novelty, nonobviousness, and utility”

Utility is usually presumed, but it is rebuttable

Disclosure requirements § 112 – Specification

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person (ordinarily) skilled in the art (POSA or PSA) to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention,

Enablement Requirement

It requires the inventor to reveal all the information that the public will need to gain the full benefit of the invention after the patent expires, including information on how to construct and use the invention

Best Mode Requirement

Inventor must disclose what they feel is the most efficient way to utilize the invention. He must reveal his own preferred embodiment of the invention.
There is no need to update it after the patent expires.

Written Description Requirement

This limits what can be claimed the patent covers. It prevents the patentee from overreaching – from claiming rights to technologies to which she did not significantly contribute

Side note: Comprising is a much better term to use instead of Consisting of

Consisting of limits her patent to only products with exactly the features specified will infringe. Comprising is a much broader term.
Consisting of implies that only products with exactly the features specified will infringe; products sporting features in addition to the ones described will not infringe

Consisting of is used to distinguish an invention from prior art that is somewhat similar.
Comprising is used when the invention is so novel that there is no other art in the field that needs to be avoided.

The patents claims describe the metes and bounds of the patent.

Whether a patent is defined enough is determined by a POSA

2. The Application Process

Alternate means of encouraging innovation

Government grants
X Prize – private space craft $10 million prize
Private Patronage

On going debate concerning the patent system – whether it is necessary or the most efficacious system

Patent Term – since 1995 the term is for 20 years starting at the application date (date when filed) § 154(a)(2)

The old system provided for only 17 years after it was issued

An application presumes an invention. Once you invent something you file for a patent (we don’t want people to sit on their inventions)
There is an average processing time of 2 years
Until it is issued, there is no enforceability. Really you only have an effective term of 18 years.

You are guaranteed about 17 years. They will extend the patent if the processing is unduly burdened/extended
Patent pending – after filing but before issued

Reasons for 20 year system

If you have a system that allows for the patent to start to run at the point where it is granted (as opposed to our

ng filed for. If one is found, interference is declared. An interference can also be declared if two parties file for a patent on the same thing. In either case, the parties go before the Board of Patent Appeals and Interferences to resolve the issue. The burden of proof rests with the party who filed the later application.
During the application period, if the applicant finds other patentable features of the pending invention, a Continuation-in-part may be filed. This allows the inventor to keep the earlier filing date but submit new material that gets the filing date of the CIP application. Note- Because of the fact that CIP’s can continue without limitation, there has been a problem of submarine patents. These are patents that stayed in the prosecution phase for a long time the free access to the invention led to use by the industry that was undermined when the patent was finally issued.
The Examiner uses the claims in the application to determine the periphery of the invention and decide whether it is patentable.
If the applicants are dissatisfied with the examiners decisions, they can appeal to the BPAI and then to the Federal Circuit. They may also appeal to the BPAI and then file suit in the District court for the D.C. Circuit and appeal to the Federal Circuit. They may appeal to the Supreme Court after the Federal Circuit.
The Federal Circuit hears all patent cases. It was created in 1982 when it merged with the Court of Custom and Patent Appeals. Its purpose was to eliminate the diversity of opinion on patent law as well as forum shopping. The Fed. Cir adopted all of the precedence of the Ct of Customs and Patent Appeals.

Assignment 15: Subject Matter
1. Introduction

This chapter is concerned only with the kinds of innovations that are eligible for utility patent protection:

Machines, manufactures, compositions of matter, processes, and improvements thereof.

If improvements have been made to a prior patent, if you want to work with the improved version, you probably will have to obtain permission from both patentees. However, if the underlying technology is in the public domain, you only need the permission of the patentee from the improvement.

This goes for the original patentee as well. Usually this will lead to cross licenses. Where both patentees can obtain a license to use the underlying technology and the improvements

Are ideas patentable?

Ideas and principles are not allowed to be copyrighted nor patentable.
A physical embodiment must be available to be patentable.
They are basic building blocks which are in the public domain. This knowledge is available for all of the public to use. You can’t get a patent that water boils at a certain temperature.

While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.

Utility Patent – innovations in machines, manufactures, composition of matter, pro