Patent Law Outline
Sheppard
Fall 2011
I) Article I, Section 8, Clause 8
A) “The Congress shall have power…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;”
II) Types of Patents
A) Utility
1) Machines, mfg, compositions of matter, products, processes, methods, etc
B) Plant
1) Asexually reproduced new variety of plants
C) Design
1) Ornamental aspects of a product
III) Rights
A) 35 USC 271(a) : right to exclude others form making, using, selling, offering to sell or importing into the US any patented invention, during the patent term w/o authority
B) 20 years from time of application or from earliest filing of application: 35USC154(a)(2)
IV) Getting a patent past the examiner
A) Disclosure (112)
1) Enablement
2) Written description
3) Best Mode
4) Definiteness
B) Eligible subject matter (101)
C) Utility (101)
D) Novelty (102)
E) Non-obviousness (*103)
V) Challenging patentability (rejections and arguments made by accused infringer)
A) All of the above
B) Novelty defeating
1) 102(a)
(a) Known or used by others in the US or
(b) Patented in foreign country or described in a printed publication in a foreign country more than 1 year prior to invention
2) 102(e)—Invention was described in
(a) Patent application filed and published in the US
(i) Only in US
(b) Patent granted on application for patent in US
(i) Except if filed in foreign in English under PCT
3) 102(g)(2)—Third party inventing activity
(a) Made only in US
(b) **Assert priority
(i) RTP + conception
(ii) No conceal, suppress, or abandon from RTP to filing
C) Statutory bars (even by a third party)
1) Pubic use 102(b)
2) On sale 102(b)
3) **Assert experimental use
VI) Interference action (P1 v. P2 claiming rights to same invention)
A) 102(g)(1)
1) Can use foreign filing
2) **Assert priority
(a) RTP + conception
(b) No conceal, suppress, or abandon from RTP to filing
Disclosing and Claiming the Invention
Generally
I) Sec 112 Disclosure Requirements—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 a person skilled in the art 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 the invention
A) Requires that the scope of the claims be less than or equal to the scope of enablement
1) The scope of enablement is that which is disclosed in the specification plus the scope of what would be known to one of the ordinary skill in the art without undue experimentation
B) Paragraph 1
1) Enablement
2) Written Description
3) Best Mode
C) Paragraph 2
1) Definiteness (pertains to the claims)
Enablement
I) Generally
A) The spec must enable a PHOSITA (person having ordinary skill in the art) to practice the invention without undue experimentation
B) Serves 2 functions
1) Information dissemination (immediate value to public)
2) Constraining claim scope (can’t claim more than is disclosed)
(a) Spec must enable PHOSITA to make and use claimed invention w/o undue exp.
C) Determined as of the time the patent application was filed
D) Cannot change spec only app is filed, even if you amend claims
II) Enablement and Claim Scope
A) O’Reilly v. Morse (1854)
1) ** Methods must be claimed narrowly
2) F— 8th claim gave Morse exclusive right to every improvement however developed where motive power is electric or galvanic current and result is marking or printing at a distance
1) H—The specification is too broad and doesn’t enable the claim. Claim is ok though.
(a) A future inventor could use electric or galvanic current to write or print at a distance, yet not use any part of the process or combination set forth in the patentee’s specification and still infringe
(b) Morse enabled a person of the highest skill to get that one embodiment, not one of ordinary skill
B) The Incandescent Lamp Case (1895) Tried to patent the genus and not the species
1) F—P sued D for infringing the Sawyer and Man patent
(a) Claim 1—An incandescing conductor for an electric lamp, of carbonized fibrous or textile material, and of an arch or horseshoe shape…
(a) In the practice of their invention, they only made use of carbonized paper and carbonized wood
(b) Edison (D) used a fibrous textile material as the filament for his lamp
2) H—The patent is invalid because SM disclosed that carbonized paper worked as a conductor and should have limited their claim only to that—if another would have used a carbonized paper as a conductor for an incandescent light, they would have infringed
(a) After they found carbonized paper, Edison went out looking for another version of carbon that would not infringe and found bamboo and 2 other species (out of 6,000) that worked as conductors
(b) Cannot claim the entire genus on a guess that another species
rity date
(a) Amended or new claims must have support in the original spec
(b) Cannot add new matter to the spec after filing and retain filing date
2) Prevents the application from later asserting that he invented what he did not
C) **More specific than enablement
1) Must convey with reasonable clarity not only how to make and use the invention, but also that patentee was in possession of the invention.
2) Focuses on what the patentee actually invented and had in his possession at time of filing
II) Ariad Pharmaceuticals v. Eli Lilly
A) Ariad made a drug that reduces the NF-kB—which activates gene expressions in the body’s immune response to infection
B) Holding: Ariad patent was invalid because it had failed to adequately describe the invention or explain how others could replicate its work.
C) Over 145 claims but none were really showing what makes it work
D) Issue: whether written description is separate from enablement
1) Holding: Yes
E) Issue 2: if so, what is it? What’s the scope and what’s the purpose of the requirement
F) May be situations where specification can enable someone to create the invention but the written description doesn’t
G) They want to make sure that you’re actually inventing what you’re claiming
H) What’s wrong with the specification that makes the claim invalid is that they claimed an invention that they actually invented
1) The case is controversial because the scope of Ariad’s patent’s claims is viewed by some as going far beyond what is enabled in the patent.NF-κB regulates over 300 genes, and NF-κB-controlled pathways are relevant to many human diseases. As many as 200 marketed drugs have mechanisms of action that may affect the NF-κB pathway.
I) Written description Requirements
1) Must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed
2) Inventor had possession of claimed subject matter as shown by the disclosure itself
3) May not be distinct from enablement in some cases
4) Question of Fact
5) When claiming a genus by function or result, must have enough information to accomplish
