Select Page

University of Minnesota Law School
Cotter, Thomas F.

Professor Cotter Patent Law Spring 2012

I. Introduction


1. What is a patent?

a. A document that confers on the patentee certain exclusive rights.

b. Patents are open, publicly accessible records – from which others may learn

2. What are the rights?

a. Patentee has the right to exclude others from using, making the invention for a certain period of time.

b. This is a negative right that does not necessarily provide the patentee the right to practice the invention (b/c of other law or blocking patents).

3. What are the statutory requirements?

a. Patentable subject matter

b. Utility

c. Disclosure

d. Novelty

e. Non-obviousness

Policy Considerations

1. Natural Rights: as the inventor of the product, I should own the rights to make, use, and dispose of them. Not as relevant to US Patent law, or at least not invoked as frequently.

a. Locke: once labor is mixed with something, that product becomes the laborer’s property.

b. Again the ideas of nonrivalrous and non-excludablility may not make sense

2. Utilitarianism: create patent law to meet certain social goals.

a. Induce Invention: Create incentive to invent for progress of science/art. Incentive is created by grant of exclusive rights so that the inventor can profit from invention and investment of time/money.

b. Disclosure: Disclosure of patentable subject matter for public education/knowledge and for others to build upon.

3. Other Benefits:

a. Innovation: encouragement of commercial product

b. Coordination: create relationships to improve investment and efficiency in improvements to invention and innovation

c. Signals: a signal as to whether a start-up is worth investing in

d. Defense: give firms/companies patent rights in order to defend against infringement claims

4. Costs:

a. Administrative: prosecution and litigation

b. Monopoly: monopoly profits are the inducement to invention and the incentive to invest in R&D.

c. Access: there are transactions costs related to making improvements to existing inventions (If there are a multiplicity of existing patents to license from, for example) and at times these costs will be so high as to discourage improvements.

5. Ultimately, the central tension in patent law is caused by the desire to achieve social benefits through technological progress by means of private rewards.

Patent History

1. Grant of authorization in US Constitution in Art. 1, Clause 8: “to promote the progress of Science…”

2. There was 1793 Act and 1836 Act

3. In 1982, a specialized appeals court for patents was established – US Court of Appeals for the Federal Circuit –

a. Primary function is to hear all appeals from the federal district courts involving patents;

b. Also hear appeals from PTO.

Globalization and Patent Reform

1. Patent rights are territorial

2. Paris Convention:

a. Obligates member nations to adopt certain minimal standards with respect to patents/trademarks, such as:

i. National treatment

ii. Priority – if you file app in Nation A and then file w/in 12 months in Nation B, the app in B is deemed to have been filed there on the date of file in A.

3. Patent Cooperation Treaty (PCT)

a. Makes it easier to get protection in multiple countries.

b. File one int’l application, designating the other countries in which protection is sought

c. Although you do have to complete the process in each of the other countries.

4. European Patent Convention (EPC)

a. All members of EU, plus a few more, are members of this treaty

b. File one application, again designating other countries.

c. Provides centralized examination process, common standards for patentability

d. You obtain national patent in designated country

5. TRIPs

a. Patent provisions required some changes to US law:

i. Change in patent term: begins on date of grant and ends 20 years from date of file.

ii. No discrimination based on inventive activity abroad

iii. Provisional applications

6. Differences between US and other nations law:

a. First to invent v. first to file – US will become first to file nation on March 16, 2013.

b. Publication of pending applications

c. Grace period

d. Best mode – US requires patentee to describe best mode of utilizing the invention

e. Post-grant opposition proceedings – way to screen out invalid patents; will be implemented in US under AIA

f. Certain patent defenses (misuse, inequitable conduct)

g. Patentable subject matter, to some extent

h. Central vs. peripheral claims; doctrine of equivalents

II. Patent Prosecution

Architecture of Modern Patent

1. Application to USPTO. Patent agent makes determination on whether patentable. Often this process is a series of negotiations with adjustments to claims and reconsiderations.

a. INID Codes: practical use is to help readers identify basic info about patent quickly

b. US Patent Number

c. Issue Date: patent term commences on the date that the patent issues

i. Pre June 8, 1995: rights terminated 17 years after date of issue

ii. Post June 8, 1995: rights terminate generally 20 years after filing date.

d. Title of Invention

e. Inventor and Assignee Information

f. Application Information

g. Domestic and Int’l Classifications

h. Fields of Search, References Cited and Other Info on Prosecution: identifies all prior art docs considered during the prosecution.

i. Abstract: brief summary of technical disclosure in the patent. Imposed by regulation

j. Drawings: required to submit if necessary for understanding of the subject matter.

k. Specification: Written description of the invention and of the manner and process of making and using it and must disclose best mode known to inventor for carrying out invention

i. Must be satisfied at time of filing

ii. Cannot be amended to add new matter necessary to fulfill required disclosure.

l. Claims: defines the patentee’s rights; should not add any further description of the invention. The function of the claims is only to define the precise scope of the rights that are warranted by the disclosure in the specification.

2. Three different types of patents: (1) utility; (2) plant; (3) design.

Pencil Claim Drafting Exercise

1. The claims define the scope of the patent, so generally regarded as most important part of patent

2. Preface: “I claim” or “what is claimed is”

3. Preamble: identifies the kind of invention: “a method”, “a machine”, “an isolated polypeptide”, etc.

4. Transition: “comprising” or “consisting” or “consisting essentially of”

a. “Compromising” means “including but not limited to” = OPEN CLAIM

i. Most prevalent

ii. Suppose I claim a machine comprising elements ABC, then infringing embodiment will include ABC and ABCD as well.

b. “Consisting of” = CLOSED CLAIM

i. Suppose I claim a machine consisting of elements ABC, then infringing embodiment will include only ABC and not ABCD as well.

ii. Why draft claim in this way?

1. Most often in the chemical arts, b/c the addition of some new element will have an unidentified effect on the invention, which may or may not render it inoperable. REMEMBER THE CLAIM MAY BE HELD INVALID IF SOME INVENTION UNDER THE CLAIM IS INOPERABLE.

c. “Consisting essentially of” – in between an open and a closed claim

i. ABC will read on ABCD if D does not make a variant that is essentially different from the claimed invention.

5. Body: Lists limitations (elements) and describes how they interact

a. These elements “limit” the claimed subject matter

b. Peripheral claiming – the claims set out the boundaries of the claimed invention. AS OPPOSED TO,

c. Central Claiming – describe the core, essence or the invention

d. Claims should not read on embodiments in the prior art or on inoperable embodiments that cannot be identified without undue experimentation. (can’t be too broad for these reasons)

e. A literally infringing embodiment contains all of the limitations (elements) \

f. Three requirements:

i. Each claim must be a single sentence.

ii. Claim must set forth how each element interacts with at least one other element.

iii. Internal references must be clear – can use “said” as long as there is “antecedent basis” that is clear.

6. Independent claims v. dependent claims

a. Independent: shorter, broader, read on (cover, render literally infringing) more embodiments.

b. Dependent: add additional limitations, cover fewer embodiments but may be useful if independent claims invalidated.

7. Means plus function claims: Section 112 para. 6,

a. Clarifying a means by which to accomplish something. (“means for doing X” where “doing X” is the function)

b. Construed to cover corresponding structure, material or acts described in specification, or equivalents thereof.

c. Must be used in combination with at least one other element.

8. Jepson claim – special format specially designed for claiming improvements.

9. Remember to define terms if not an often used term with a common understanding.

Patent Prosecution

1. Where two or more inventors are seeking to patent the same invention, the PTO must declare an “interference” between the competing applications and determine

ess enacted is limited, it follows that Congress never meant to make items outside the scope of the legislation patentable.

And with regard to the specifics of the 1970 act:

Congress specifically excluded bacteria from the coverage of the 1970 Act … The fact is that Congress, assuming that animate objects as to which it had not specifically legislated could not be patented, excluded bacteria from the set of patentable organisms.


1. Important because it decided upon the patentability of living organisms.

2. Patentees often apply for protection for both the method and product in order to cover other processes/methods that may create the product.

3. Court emphasized the man-made aspect of the bacterium and that it was not naturally occurring.

4. Court also did not want to hold that inventions unanticipated by Congress are not patentable, b/c this would conflict with the basic premise that anticipation undermines patentability

5. Majority and dissent disagreed about the presumption to be used here: for majority, liberal construction of broad language of statute; for dissent, narrow construction due to anti-monopoly stance of Congress.

6. Currently, you may obtain a utility patent for a plant, according to JEM Ag Supply.

7. 42 USC 2181 – prohibits the patenting of nuclear devices.

8. There are some holes in the broad interpretation of section 101 and the three traditional exceptions – computer programs/software, or business methods, and medical/therapeutic methods.

Bilski v. Kappos (Supreme Ct. 2010)

Holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” In so doing, the Supreme Court affirmed the rejection of an application for a patent on a method of hedging losses in one segment of the energy industry by making investments in other segments of that industry, on the basis that the abstract investment strategy set forth in the application was simply not patentable subject matter.

Majority opinion

The Court affirmed the judgment of the Federal Circuit in In re Bilski, the case below. However, it rejected the machine-or-transformation test as a sole test of patentability based on an interpretation of the language of § 101. The Court rejected the Federal Circuit’s statutory interpretation regarding the word “process,” finding the definition in § 100(b) to be sufficient without turning to the canon of noscitur a sociis.§ 100(b) defines process as a “process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”

The Court looked to Gottschalk v. Benson and Parker v. Flook, and noted that both had explicitly refused to rely on the machine-or-transformation test as the sole test for patent eligibility.

The Court also rejected a categorical exclusion of business method patents from eligibility, reasoning that the definition of “process” in § 100(b) includes the word “method,” which appears to comprehend some forms of business method patents. 35 U.S.C. § 273(b)(1) also provides as a defense to patent infringement prior use of a “method of conducting or doing business.” By acknowledging the defense, the statute also acknowledged the possibility of business method patents.

Regarding Bilski’s claimed subject matter, the Court found that his method of optimizing a fixed bill system for energy markets was an unpatentable abstract idea. Despite taking a broader reading of patent eligibility for processes, according to the majority opinion “this Court by no means desires to preclude the Federal Circuit’s development of other limiting criteria that further the Patent Act’s purposes and are not inconsistent with its text.”