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Patent
University of North Carolina School of Law
Chin, Andrew

1) Background
a) Foundations of the US Patent System
i) 1474 – 1st patent law – Venice itself was patented; hub of the Renaissance, spurred need for patent system
(1) Those in power used the patent system to entrench their interests in the Renaissance
ii) 1623 – Statute of Monopolies – English crown awarding franchises; exclusive rights to trades
(1) Parliament, in response, limited awards to where an inventor “invented a new trade”

iii) 1789 – US Constitution Art. I, §8, cl. 8; part of Congress’ enumerated powers
(1) “Congress shall have the power . . . to promote the progress of science and the useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries”
(a) Key Points here –
(i) Explicit objective for Congress – to promote….
(ii) Utility requirement – useful arts
(iii) Limited times – corresponds w/ free market system to provide motivation/incentive to invent
(iv) Exclusive right – generally a bundle of rights; can be transferred/assigned individually
(v) Science historically referred to ‘knowledge’ in general; thus liberally construed
(2) Patents represent civil rights (statutory) – Constitution gives Congress the power to . . .
(a) Thus there is no FR or inherent natural right to a patent; Congress can later limit or restrict further.

iv) 1790 – 1st US Patent Act
(1) Rqmts: novelty, utility, importance
(2) Filing: specification and model of invention necessary
(a) To distinguish the invention from prior art AND
(b) To enable workman skilled in the art to make, construct the same after patent expiration
(3) Generally gave limited monopoly of 14yrs
v) 1952 – major recodification of the Patent Act
(1) Rqmts: claims, novelty, nonobviousness, utility
(2) Replaced the subjective invention test with an objective test for nonobviousness (§103)
(a) Motivation – post WWII – US forced to innovate and experiment; needed incentives for such & the subjective inventiveness inquiries promulgated by cts in the 1930s-40s were too strict
(b) 1952 Act took framework out of the hands of judges and statutorily codified patent rqmts.
vi) Post 1952
(1) In 1960s there were still inconsistent holdings in cts as to ‘inventiveness’ – led to forum shopping
(2) Ultimately created unpredictability and a lack of uniformity in the patent system
(3) 1975 Commission on Revision of the Fed.Ct App. System derided this forum shopping
(a) Devised the formation of the CAFC in 1982 – Fed Ct Improvement Act of 1982
vii) 1982 – CAFC + 1952 Act – modern Patent System
(1) CAFC = SC of patent cases; however, note potential for SC review here still
(2) CAFC has national federal Jx over patent matters – 35 USC §1295
(a) Policy – 1 ct w/ rich expertise in patent matters; provides predictability and uniformity to system

b) Framework of the MODERN US Patent System – Bonito Boats case – 1989
i) Patents represent civil rights (statutory) – Constitution gives Congress the power to . . .
(1) Thus there is no FR or inherent natural right to a patent; Congress can later limit or restrict further.
ii) Emphasis on Disclosure – §112
(1) Applicant must reveal to the public the substance of his discovery (spec & model) & the best mode
(2) The best mode rqmt = the indefiniteness rqmt of patentability
iii) Claim requirements – used to define rights
(1) Peripheral claims versus omnibus claims (see later)
iv) Statutory bars – §102
(1) 102(a-b) work in tandem to exclude knowledge already available to the public from patent protection
(a) Policy – to give even a limited monopoly on that material would injure the public
(2) 102(b) statutory bars – public use/sale – Pennock case 1829 (see later)
(3) 102(e) anticipation – even if novel and useful, also cannot be anticipated by prior art in the field
v) Nonobviousness std – §103
(1) Operates as the centerpiece of the 1952 Act – extends limitations of §102
(2) No protection when differences are such that the SM as a whole would have been obvious at the time the invention was made to PHOSITA – see Graham case (later)
vi) Administrative structure via USPTO
vii) Globalization and Harmonization w/ international law

c) Forms of Patent Protection
i) Utility patents
(1) Most common; pertain to technological products and processes
(2) Not automatic – requires submittal of application to USPTO (per §111)
(a) Examiners assess whether the application merits a utility patent under §131 wrt certain criteria:
(i) Full disclosure and distinct claiming of the invention – per §112
(ii) Usefulness of invention – per §101
(iii) Novelty of invention – per §102
(iv) Nonobviousness of invention – per §103
(b) If granted, rights conferred per §271 – exclude others from making, using, selling, offering, importing
(3) Term typically 20yrs from date of filing
(a) Note that the period required for examining validity is included WITHIN the patent term
(b) i.e. the term doesn’t start after the application is deemed valid; it starts upon filing

ii) design patents
(1) generally pertain to articles of manufacture – new, original, or ornamental design – §171-173
(a) patentable only if embodied in an article of manufacture (useful)
(2) KEY – must be ornamental in character; if judged as ‘primarily functional’ – then need a utility patent

iii) Plant patents
(1) Generally pertain to distinct and new varieties of plants asexually reproduced (i.e. certain azaleas) – §161
(2) Rqmts – usefulness, novelty, nonobviousness, and must have a color drawing included in application

iv) Patent-like plant variety protection
(1) Generally pertain to distinct, uniform, stable plants sexually reproduced (from 2 different prior varieties)
(2) 7 USC §2483 – right to exclude others from selling, offering, or reproducing
(3) Except – can use variety to breed further unique varieties AND farmers can plant protected seeds if purchased.

d) Other forms of Protection
i) Trademarks – word, name, symbol, device to identify/distinguish good/product
(1) CAN NEVER EXTEND TO FUNCTIONAL FEATURES OF A PRODUCT
(2) Infringement occurs when sufficiently similar to create a likelihood of confusion
(a) Factors considered: appearance, strength, consumer sophistication, competition, intent, actual confusion
(3) Potentially infinite duration (dependent upon continued use)

ii) Copyrights – any work of authorship; protects the expression of an idea (but not ideas themselves)
(1) Rqmts – originality and fixation
(2) No formalities rq’d – though must register w/ CO and place notice of CP on products
(3) Term – life + 70yrs

iii) Semiconductor Chip Protection –
(1) fail to fit under patent law (obvious) and also under copyright (not original)
(2) Led to Semi-conductor Chip Protection Act of 1984 – can register w/ CO – gives right for 10yrs

iv) Trade Secrets – the chief alternative to the patent system
(1) Illustrates the balance b/w inventive disclosure and secrecy; it is truly a trade off
(a) Inventor must either maintain trade secret, apply for patent protection, or allow item to enter public domain
(2) CAN COVER ANY VALUABLE BUSINESS INFO; broader scope than a patent
(a) Info must have been subject of reasonable efforts to maintain secrecy
(b) Info must derive commercial value not generally ascertainable by others
(c) TEST: cts balance costs of efforts v. benefits obtained to assess whether ‘rsble efforts’ truly made.

e) Patent System as a Policy Instrument
i) Most theories on patent policy can be lumped under Utilitarian label
(1) Lockean and Hegel theories are the exception – grounded instead in Natural Law
(a) Lock – patent reward for personal labor; but note how this theory fails to address nonobviousness
ii) Utilitarian approach
(1) Time is of the essence; not labor
(2) Originality and nonobviousness are of the essence
(3) Social usefulness is of the essence
iii) Paradox – we’re putting a tax on usefulness
(1) In order to have something, the public must pay this ‘tax’ (higher prices) to reward, provide incentive to invent
(2) This paradox is b/w the patent system and the free market system
(a) Ironically, US advises former communist societies to form a free market AND a patent system
(i) Policy –
1. Limited monopoly provides motivation/incentive for innovation
a. Pure free market doesn’t create the ‘best products’ – lower quality, less quantity in itself
b. Thus by encouraging innovation the overall market is enriched
2. Patent provides a tangible commodity that encourages free market trade
a. Encourages discourse; tradeoff b/w patents and trade secrets (see later)
(b) Patent System v. Antitrust policy
(i) Patent system existed nearly a century before the Sherman Act arose
(ii) Twin foes of Patent law
1. Misplaced antitrust priorities –
a. Cts treating patent licensing as an antitrust violation (Hensley Equipment v. Esco – 1967)
2. Subjective inventiveness tests – (see previous page)
a. Cts creating stricter tests for sufficient ‘inventiveness’ (flash of creative genius) – 1930-40s
b. Largely eliminated by the 1952 Act rqmt of nonobviousness – objective inquiry (see above)

iv) Underlying Utilitarian policy justifications of patent system
(1) ‘incentive to invent’
(a) Premise – too few inventions will be made in absence of patent protection b/c inventions, once made, are easily appropriated by competitors who have not shared in the inventive costs
(i) This will drive prices so low that no profit will be possible for the inventor; thus quash motivation
(ii) Providing a limited monopoly controls a

nd unmistakably relied upon those uses or benefits – Rowe
d. It is in Jepson style – Rowe case
e. There is dependence upon a preamble phrase for antecedent basis – Bell Communicaitons
(e) SUMMARY – Claim drafting driven by:
(i) Past judicial treatment of terms/formats
1. Fressola
a. ‘System for 3D display of celestial objects as disclosed in the specification and drawings herein’ found to be an omnibus claim and thus invalid; must claim peripheral method.
2. Catalina
a. ‘041 patent for kiosk terminals to dispense coupons; preamble of claim included language of ‘located at predesignated sites such as consumer stores’ – ct said this preamble language not limiting.
3. National Tube, Rowe, Markman, Pitney, etc as well (see above)
(ii) USPTO Policies
1. One sentence rule – a claim must be composed as a single English sentence; upheld in Fressola
2. Three part claim – preamble, transition, and body; construction of each
(iii) Traditions of the patent bar (see pp543-544 text)
1. Antecedent basis; Reluctance to claim an empty space (rather define around it); Mis-descriptive words

(2) Enablement – §112, parag1
(a) Purposes:
(i) Bans inoperative inventions from acquiring patent protection
(ii) Guards against overly broad claims
(iii) Serves the disclosure role of patent system

(b) Language: ‘in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains’ to make and use the claimed invention
(i) ‘one skilled in the art’ – equivalent of rsnble person in torts; involves heightened std aimed at industry
1. Charged w/ knowing everything in the trade/art available at the time of patent filing
a. no excuse if there is a burden in finding the information (see publication cases)
2. makes the USPTO ask whether society would have had this invention anyway
a. serves the purpose of patent system – to not remove inventions from public domain

(c) G/R from cases:
(i) The specification must be enabling at the time of filing to satisfy §112 – Gould giant laser case
(ii) Determining enablement is a question of law – Atlas Powder case
1. however, note that the question of law has underlying factual inquiries as to ‘undue’ (below)

(iii) Sufficient ‘enablement’
1. A mere ‘germ of an idea’ does not constitute enabling disclosure – Gould giant laser case
a. an ‘invitation to further experimentation’ alone doesn’t constitute enablement – In re Wright
2. Likewise, the specification is not a production document (need not explain how to mass-produce)
a. enablement doesn’t require that the applicant provide every possible piece of information necessary for a person to make and use the invention; need only explain sufficiently so that PHOSITA can make and use the full scope of the invention w/o undue exp – Atlas Powder
3. Similarly, the inventor need not describe why the invention works – Gould giant laser case
a. Inventor need only sufficiently describe the invention (such that PHOSITA can make/use)

(iv) A description requiring further experimentation on the part of PHOSITA is invalid – Gould case
1. however, that merely some experimentation is necessary doesn’t preclude enablement – Atlas case
2. rather, only a description requiring further undue experimentation is invalid – Atlas Powder case
a. ‘undue’ is a fact-based inquiry– In re Wands case
i. quantity of experimentation necessary
ii. amt of direction or guidance presented
iii. presence or absence of working examples
iv. nature of the invention
v. state of the prior art
vi. relative skill of those in the art
vii. predictability or unpredictability of the art
viii. breadth of the claims
b. what is undue is dependent upon the industry/art in question – Am. Home Products case
i. no rqmt that all embodiments be tested; just must limit monopoly to inventive contrib..