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

Intellectual Property
Outline
 
Assignment 14 – Patent Protection Introduction
 
Dimensions of IP
Scope
Term
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:
Useful;
Novel; and
Non-obvious (hardest)
§§101-103
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
P.120
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
Benefits
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.
 
Downside
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 system) it gives people a reason to extend the prosecutions process. 
Submarine patent – someone files for a patent (without disclosing it), someone else would invent the thing also and market it, but then all of a sudden you are infringing a patent without knowing it
§ 122 – patent applications become public after 18 months
First to Invent – there is a process called “interference” which determines who was the first to invent if two applications are filed concerning same basic invention at basically the same time
Prosecution Latches (sp????) – if you unduly delay the application process your patent become invalidated
 
Invention – Conception + the invention must be reduced to practice (working model, physical subject, etc.)
 
Court of Appeals for the Federal Circuit – hears all patent appeals from either the PTO or regional district court
Created in 1982, merged earlier courts (Court of Customs and Patent Appeals, Court of Claims)
12 judges, Article III court with exclusive jurisdiction over appeals cases
Prior to this courts conception, patent appeals went to the regional courts, which led to inconsistent decisions and forum shopping.
Goal – to unify and perhaps enhance patent law
This court to pro-patents, a lot more are upheld than they use to be
 
Double Patents
Same invention type double patenting occurs when a claim in the second patent turns out to cover exactly the same invention as that claimed in the first patent
The offending claim of the second patent is invalid for lack of novelty
Obviousness type double patenting occurs when a claim in the second patent is an obvious variation on a claim in the first patent
The only problem is that the term of protection will be too long if both patents remain in force
 
Patent law is the strongest IP protection available in the US. It entitles the holder of the patent to exclude others from the use of the patented instrument and there is no duty to exploit the invention and no compulsory license system.
 
Three Types of Patents
Utility Patents
Design Patents
Plant Patents. (Asexually reproduced plants)
Justification for Patents:
Incentive to invent- Ensures that free riders are not able to undercut the original inventor.
Disclosure- Patentee gets exclusive right but the holder must disclose information about the invention to the public.
Rewards for Service- Inventions are a service to society and those that do it should be rewarded.
Natural Rights- If the inventor applies their labor to invent something it is their property.
Gets rid of Arrow’s Disclosure Paradox- If an inventor discloses an idea to get manufacturing, the other side may take the idea and not manufacture the inventor’s idea.
Cost- The patent system decreases transaction costs.
Term of Patents
§154(a)(2) of the Patent Act states that a patent term is 20 years from the date on which the application was filed. However, since most patents take about 18 to 24 months to be issued, the actual length is about 18 years.
The time period has moved to become closer to that of the other countries patent terms.
The filing date is considered to be the date of the invention.
Patent Applications
The first inventor is entitled to get a patent under the US system. This is based on the policy that the first mover gets the protection. (First mover advantage).
While a patent application is pending, the law of trade secrets protects the inventors.
Under §122 of the Patent Act, after 18 months, most patent application will become public.
Disclosure-§112 lays out what must be disclosed in a patent application.
Must describe the patent in detail.
Must enable someone reasonably skilled in the art to reduce it to practice. These requires a two-part analysis and looks at whether the inventor believed one mode was better than the others and whether a reasonable person skilled in the art is able to make the invention without undo experimentation.
It must describe the best mode for reduction to practice.
Regulation of Patents
The disclosure requirements are set out in §112 of the Patent Act and the statutory requirements are:
Novelty under §102
Non-obviousness under §103
Utility under §101
Originality under §111
Applications for patents are reviewed at the Patent and Trademark Office. A patent examiner looks at the application and looks for prior patents that may cover the one being 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, processes, and improvements thereof.           
Machines, manufactures and composition of matter are easy to recognize – steam engines, pencils and aspirin
Process – a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state of thing.
§ 100 – a process means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material
Process patents are not as valuable as a product patent – difficult to monitor
Cross licenses – if an improvement is made to an already patented product, you need permission from both patentees to use the improved version – so new and original patentee needs the other’s permission
There is a lot of debate/exceptions over experimental uses in dealing with product/process patents
 
Diamond v. Chakrabarty p. 593
Supreme Court of Unites States, 1980
Facts
 Chak files for three types of patents;
Process claims for the method of producing the bacteria
Claims for an inoculum comprised of a carrier material floating on water, such as straw, and the new bacteria
Claims to the bacteria themselves
First two were granted and the third was denied because:
Micro-organisms are “products of nature”
That as living things they are not patentable subject matter under 35 U.S.C. § 101
Issue
 Appeal that 101 was not intended to cover living things such as these laboratory created micro-organisms
Reasoning
§ 101 Inventions Permissible – 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, subject to the conditions and requirements of this title
Are these m-o’s a manufacture or composition of matter?
Manufacture – the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery
Composition of matter – all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.
Congress clearly contemplated that the patent laws would be given wide scope
Legislative history also favors a broad reading – “include anything under the sun that is made by man”
Manifestations of nature, free to all men and reserved exclusively to none – laws of nature, physical phenomena, and abstract ideas have been held not patentable
These m-o’s are clearly patentable – it is a nonnatureally occurring manufacture or composition of matter – a product of human ingenuity having a distinctive name, character and use
The patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature’s handiwork, but his own; accordingly it is patentable subject matter under § 101
 
 This allows for a very broad read into what is patentable. Differentiates between available in nature and man-aided. If it couldn’t occur in nature without man’s intervention then it wasn’t patentable – otherwise it was good to go. Even living things/products of nature are patentable.
You can get a utility patent on a living organism even though Congress implemented special patent statutes for plants. 
Same standards apply for living things for other patents. 
Biological Products and the Problems with Patents
Cell lines and DNA are not only commercial products, but they are also tools of basic biological research. Patents on such product may hinder innovation and ensnare inventors who use the product in ways not enables by the patentee.
A. Materials Derived from Living Organisms
Funk Case
Different bacteria are mixed together to produce new and novel uses – no patent though
The SC held the preparation not patentable on the ground that each bacterium is a manifestation of laws of nature, free to all men and reserved exclusively to none.
Merck Case
Use a cow’s liver to obtain a pure version of Vitamin B12 – they used new extraction/purification methods in order to do this – patentable
However, Merck was able to isolate the active substance that gave cow liver its therapeutic benefits to anemia patients. A patent was issued on Vitamin B12 
The fact that a new and useful product is the result of processes of extraction, concentration and purification of natural materials does not defeat its patentability.
The compositions of the patent here never existed before. If we regard them as a purification of the active principle…the patented compositions are of great medicinal and commercial value. The step from complete uselessness to great and perfected utility is a long one. That step is no mere advance in the degree of purity of a known product
Now after Chakrabarty Case – which makes Funk bad law – the PTO has taken the position that all non-human living things that are artificially produced are patentable. 
 
State Street Case – was the rule that you couldn’t get a patent on the business system. Now you can. If you have an innovative Business method or computer program – it is patentable
 
Before mental step/logical method of thinking weren’t patentable – now it is, this allows for computer technology like algorithms.
 
It is very beneficial to own both the process/product patent. This gives you total ownership over something.
If you only have a process patent, it is more difficult to enforce due to a lack of ways to know what process other people are using. Quite difficult to police infringement of process patent.
This is why trade secrecy is quite attractive to some people. It keeps the process hidden from outsiders.
Reverse engineering would be to take apart a product and learn the process by rebuilding it. You can’t really do this often. Difficult to rebuild a complex organism/product
 
First Inventor Defense:
This is a defense to infringement in favor of any person who acting in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent
 
Non-Utility Patents – Plants & Designs.
Plants have two different statutes
Designs § 171-173 of the Patent Act create patnet rights in new, original, and ornamental designs for articles of manufacture
The terms “new and original” have essentially the same meansing as they have for utility patents. This is basically nonobviousness and also to make sure that the design is ornamental rather than primarily functional. 
These patents are thought of as protecting designs that are so inseparable from function that they cannot be protected by copyright.
We don’t have anything that could patent an “Industrial Design”
Must be ornamental (can’t just be a refrigerator door or a dashboard)
You have to get the non-function aspects of a product (functional – useful/utility)
A shoe – functional would be the shape of the shoe. Ornamental would be the pattern of material around the shoes, decorations, etc
Decisions on what is nonobvious and what is an infringement tend to be very subjective.
 
Assignment 16: Utility
1. Introduction
 Utility basically means useful. Utility is usually assumed, because why would you patent a useless item.
It must be specific, substantial and credible
In early cases this seemed to simply be a way to deny patents that were unwholesome or immoral products – gambling machines etc.
Two justifications for Utility
It serves as an adjunct to the specification requirement in § 112 in that it assures that the invention does what is claimed in the specification
Associates utility with problems akin to those addressed by the subject matter requirement
The requirement that an invention have an end-use insures that the invention has a use – that is more than just a principle of nature
Thus the hurdle imposed by utility acts as another way to remove from the scope of patentability discoveries that are fundamental building blocks of science. 
Proving Utility – Note 3 p. 630
The PTO has the initial burden of challenging a patent applicant’s presumptively correct assertion of utility
If the PTO provides evidence showing that one or ordinary skill in the art would reasonably doubt the asserted utility, however, the burden shifts to the applicant to submit evidence sufficient to convince such a person of the invention’s asserted utility.
 
Assignment 17: Novelty
 § 102 lays out four distinct concepts:
Novelty (newness) – §102(a) (e) & (g)(1)
Statutory bar (b) (c) & (d)
Priority – (g)(2)
Originality – (f)
A person shall be entitled to a patent unless: 102 (a) – 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,

s the accumulation of old devices patentable
 
Graham v. John Deere Co. p. 669
Did this guy’s improvement of plow technology warrant a patent? 
This case is concerning a new version of a patent he already had. He just flipped part of the plow to the other side in order to make it more efficient and less likely to break.
This old patent would be the prior art
 
What effect did the 1952 Act have upon traditional statutory and judicial tests of patentability and what definitive tests are now required?
The general level of innovation necessary to sustain patentability remains the same.
This goes back to the Hotchkiss Rule p.666
Unpatentable inventions that could have been constructed with the skill possessed by an ordinary mechanic acquainted with the business.
Congress has a qualified authority in issuing patents. Can’t pull stuff out of public domain, etc.
Under § 103 – which was intended merely as a codification of judicial precedents that inquires into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.
1) The scope and content of the prior art are to be determined;
2) Differences between the prior art and the claims at issue are to be ascertained;
3) And the level or ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as:
Commercial success,
Long felt but unresolved needs,
Failure of others,
Might be utilized to give light to the circumstances surrounding the origin of the subject matter sough to be patented.
Prior Art (can’t patent public domain)
Novel, non-obvious to a POSA
 
Anticipation v. Graham Test (POSA)
Graham Test: If the POSA looks at multiple references would the invention be obvious?
While Anticipation is only concerned with one reference of prior art, which contains the all the key concepts of the invention
 
In determining Scope of Prior Art
1st level: Field of Invention
2nd level: Analogous, but pertinent
 
 
Sakraida v. Ag Pro, Inc. p. 677
This was a water flush system to remove cow manure using kinetic energy…a slant
All it did was combine a lot of systems already in existence to make it
There was no synergy – it was a combination patent
The whole must be greater than the parts
This creates a special category of combination patents
There must be synergy if you are going to get a patent on such an invention.
This patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations.
Exploitation of the principle of gravity adds nothing to the sum of useful knowledge where there is not change in the respective functions of the elements of the combination; this particular use of the assembly of old elements would be obvious to any POSA.
This did not produce a new or different function. 
 
Stratoflex, Inc. v. Aeroquip Corp. p. 679
This case basically renounces Sakraida case and reinstates Graham
This is an attempted patent over airplane engine tubing. IT is composite carbon with two layers of tubing to decrease the likelihood of arcing from static electricity, which creates pinholes in the tubing, causing links.
The scope of the prior art has been defined as that reasonably pertinent to the particular problem with which the inventor was involved.
There was a study out that said that carbon black increased the conductivity of the tubing, which decreased the arc. He even referred to a textbook. The only real original part was making it composite carbon.
The study showed that it would help if it was spread out evenly. 
The Abbey-Upham Repost disclosed the cause of the pinholes. That carbon black increases conductivity, it just didn’t mention the composite part
A previous patent teaches composite tubing having carbon black in one layer to make it electrically conductive for dissipation of static electricity
Another patent teach a composite rubber hose with each layer arranded to take advantage to take advantage of its particular properties. It suggests carbon black as a filler.
POSA – someone with Slade (inventor) talent. A chemical engineer with experience.
Patent is invalid.
Clear cut case of nonobviousness. Uses the Graham test.
Secondary Considerations –
Commercial success – claims the entire industry makes the tubing as a licensee.
Recognition and acceptance of the patent by competitors who take licenses under it to avail themselves of the merits of the invention is evidence of nonobviousness.
A nexus is requires between the merits of the claimed invention and the evidence offered. The commercial success must be due to the merits of the invention.
This one was a free license. There were only two licensees and they got them for free from a settlement and as a group patent license. 
Longfelt but unfilled need expressed in the specifications – no
Other skilled in the art tried and failed to find a solution – no Abbey-Upham just was suppose to find out the reason why it was happening, not find a solution.
A requirement for synergism or a synergistic effect is nowhere found in the statute.
Synergism may point toward nonobviousness, but its absence has no place in evaluating the evidence on obviousness.
There is nothing in the statute concerning combination patents. All patents must meet the same requirements.
 
The §103(a) inquiry
References are found and dated to determine whether effective dates precede the critical date, the adequacy of dissemination is determined, and the contents of the art are scrutinized.
Although the activities that come within its scope are not listed, it is universally assumed that the same art that is pertinent to nonobviousness is also the art that is relevant to novelty.
102(a) – information known or used in the US as well as both domestic and foreign patents and printed publications
102(e) – information contained in patent applications, so long as the patent eventually issues.
102(g) – secret art – inventions made in this country that have not been abandoned, suppressed, or concealed
The crucial date is the date on which the invention is reduced to practice;
The Effective date is the date on which the reference is considered accessible.
(a) Policy Considerations
How large a contribution must an inventor make to merit a patent?
Hotchkiss standard – POSA?
(b) Practical Application
Really tough for judges to apply a rigorous standard since they are not a POSA
(i) Teaching Away
Occasionally, prior art teaches away from the invention in the sense that it discourages doing what the inventor has done. 
US v. Adams – the court found that long accepted theories in the art should have deterred anyone from trying to put together the battery at issue in the case Known disadvantages in old devices which would naturally discourage the search for new inventions may be taken in to account in determining obviousness.
Discovery of the problem can merit a patent even though the solution was trivial once the problem was understood
(ii) Secondary Consideration
The so-called secondary considerations are factors external to the invention itself that deomonstrate its inventiveness.
1) Long-felt need for a solution to the problem the invention addresses;
2) The failure of others to find such a solution;
3) The commercial success of the invention in the marketplace; and
4) Acquiescence – the willingness of others to accept the patent as valid and take a license or forgo use of the invention
Lower courts must look at secondary considerations in every case, but also they must consider whether there is a nexus between the invention and the factor.
Absent a showing that the factor is present because of inventiveness, the consideration will not be taken into account in determining nonobviousness
(v) Obvious-to-try
Should the scientific obviousness of an experiment render its result legally obvious?
Obvious to try has long been held not to constitute obviousness
Instead, the court asks whether there was a reasonable expectation of success If there were many approaches to choose from, if there were many pitfalls along the way, the successful outcome will de deemed nonobvious
An obvious-to-try situation exists when a general disclosure may pique the scientist’s curiosity, such that further investigation might be done as a result of the disclosure, but the disclosure itself does not contain a sufficient teaching of how to obtain the desired result, or that the claimed result would be obtained if certain directions were pursued.
 
3) Does §103 render the §102 inquiry superfluous?
Close attention to the details of the nonobviousness inquiry makes the independent significance of §102 clearer
(i) Inherency
Information inherent in a reference counts for novelty
Inherency is not sufficient for nonobviousness. In order for a reference to be utilized, the element of interest must be expressly pointed out.
It would be too costly to require inventors to research all prior art with enough insight to appreciate every scrap of information inherent in it, and then combine al