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Patent
University of Pennsylvania School of Law
Wagner, R. Polk

Wagner – Patent Law – Fall 2009
1.     Intro to Patent Law
a.       28 U.S.C. 1295, 1338, 35 U.S.C. 111-113, 119, 122, 132, 351
b.      A valid patent must be:
i.      Fully and appropriately described (§112)
ii.      In compliance with statutory bars (§102)
iii.      Novel (§102)
iv.      Nonobvious (§103)
v.      The work of the inventors (§116)
vi.      Useful (§101)
vii.      Within the appropriate subject matter (§101)
2.     The Economics of Patents
3.     Patent Document: 35 U.S.C. § 112
a.       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 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 his invention…
b.      Enablement:
i.      Disclosure Theory: Disclosure is often more valuable than the actual invention.   Want to disclose enough, but not so much that it is inefficient to require the disclosure or make it hard to tell what the new invention is.
ii.      Three principles of enablement:
1.       The scope of disclosure required = Scope of the claims.
2.       The quantity of disclosure is related to the predictability in the art.
3.       The measurement of the disclosure is as of the filing date.
iii.      Wand Factors for Enablement
1.       Breadth of the claim
2.       Nature of the invention
3.       State of the prior art
4.       Level of one of ordinary skill
5.       Level of predictability in the art
6.       Amount of direction provided by the inventor
7.       Existence of working examples
8.       Quantity of experimentation needed to make or use the invention based on the content of the disclosure
c.      Written Description
i.      The specification must teach the invention by describing it, it is more than mere possession requirement. Is the quid pro quo to giving protection
ii.      Separate req. from enablement
1.       Might want higher standard of disclosure in developing areas
2.       Authentication mechanisms
3.       Disclosing the species (smaller) doesn’t provide enablement for the genus (larger).
4.       Don’t want super broad claims
iii.      Prevents inventors from capturing future improvements on their inventions, you only get claim coverage over what you can describe, so you have to understand what you’ve discovered. We don’t want to protect stuff that ppl don’t know they have.
iv.      Practical considerations for using written desc rather than enablement:
1.       Easier for judge to get outcome he wants
2.       Less Expert testimony req.
3.       Less case law to work through
v.      Ariad might signal the end of the WD requirement.
d.     Best Mode Requirement
i.      Subject part: Did the inventor have best mode in mind at the time of filing?
ii.      Objective Part: Was disclosure sufficient to enable a PHOSITA, could he discern the best mode from the description
iii.      Randomex: Disclosing multiple modes satisfies the requirement as long as the best mode is included. Brand name is ok, doesn’t exact formula.
iv.      Chemcast v. Arco Industries: Best mode violated cuz the guy knew of only one best mode, but disclosed a range. Have to disclose what you think is the best.
v.      Key Limitations on the Best Mode:
1.       1. An inventor need not disclose a “best mode” when the mode is unrelated to “the quality or nature of the invention”
a.       Example: “Production details”: Information about how to produce the invention well.
2.       An inventor need not disclose information that is within the ordinary skill in the art.
a.       Example: “Routine details”: Information that a PHOSITA would know.
vi.      Examples:
1.       You select a mode by chance or convenience. Disclose? Prob. Not, because you can’t be sure it is the best
2.       You select a mode because it makes the invention easier/cheaper to produce.  Must you disclose the mode? No, so long as that’s not what you’re claiming
3.       You mistakenly or inadvertently fail to disclose the best mode. Problem? Yes.
4.       You work on a corporate research team. A (non-inventor) colleague determines a better mode than you, tells you before the filing date. Disclose? Yes, so long as he is right and you agree.
a.       Same, but he doesn’t tell you. No.
b.      Same, but does tell upper management. No
4.     Novelty Requirement, 35 U.S.C. § 102:
1)A person shall be entitled to a patent unless –
(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, before the invention thereof by the applicant for patent, or
a.       Anticipation 35 U.S.C. § 102
i.      Two Requirements:
1.       Identity requirement: everything you are inventing is described in the prior art reference
a.       Every element must be included in single piece of prior art
i.      Or inherently included (PHOSITA would understand it to be there)
ii.      Any difference in substance should be evaluated under obviousness.
2.       Enabled (prior art can anticipate your invention thru anticipatory enablement even tho the prior art didn’t satisfy the enablement requirements of 112)
a.       The prior art has to actual enable. Can’t just show a random compound, must enable making it. Based on PHOSITA
ii.      Example of no anticipation: Diaper case: Guy invented diaper with 3rd fastener for sealing it after rolling it up. The prior art was all other diapers. Not anticipated b/c they didn’t include the 3rd fastener. Prior art has to disclose the claim pretty much identically.
iii.      Inherent anticipation: Oil can case: Oil can funnel inherently anticipated funnel for dispensing popcorn. The structure in the prior art did not limit its use to dispensing oil.
iv.      Accidental anticipation is not anticipation (creating small amts of element in reaction doesn’t anticipate process for creating large amts of element 95. The public wouldn’t benefit from increased knowledge otherwise.
v.      If the prior art offers nothing more than a starting point, it doesn’t anticipate.
b.     Known or Used by others (IN THIS COUNTRY):
i.      Prior art must be reasonably accessible: Tablecloth drawing that maybe existed 30 years ago isn’t reasonably accessible. So if one guy knows it, but doesn’t make it available, keeps it in his head, that’s not prior art.
ii.      Limited field trials count as known or used, so long as they weren’t kept secret (Rosaire v. Baroid, method for looking for oil)
iii.      If the art disappears, then is independently invented again, then it doesn’t count as known or used by others (Gayler v. Wilder, safe case)
c.      Patented or Described in a Printed Public

Conception = Jan 1. Case B: On Fed. 1, you realize it needs an additional element to work. Conception = Feb 1.
ii.            3rd Part art: Implied Effects of 102(g):
a.       Priority contests controlled by 102(g0)
b.      Can allow 3rd party inventors to backdate their publications and block patents. So Avi conceives on day 1 and doesn’t file, Dow conceives on day 2, Avi publishes/commercializes on day 3. 102(g) backdates Avi’s publication to day 1, and blocks Dow’s patent.
5.     Statutory Bars: 35 U.S.C. § 102(b), 102(c); 102(d)
a.       102(b): No patent if, for more than one year prior to date of application:
i.      Patented or described in printed publication anywhere
ii.      Or in public use in USA
1.       Openness, lack of control, or commercial exploitation triggers PPU, experimental use does not. Patent challenger has burden of proof to show PPU, which can be rebutted by the patentee.
2.       Any use, no matter how small can be considered public if it is not kept secret. Use of one can be considered public. Doesn’t even have to be visible to be considered public (corset spring)
3.       You can show it to people if you retain control over it, and there is a confidential context (Rubiks Cube case), and it won’t be considered public use. Want to let inventors test their stuff.
4.       Experimental Use is an exception to prior public use: Testing road in public. (he monitored). BUT boat motor case (didn’t monitor, just sent them into the world)
iii.      Or on sale in USA
1.       Hose case, sold for 7 years then filed, no good.
2.       Any commercial offer for sale as defined by UCC = for sale
3.       Bigger issue: is what’s for sale the invention? Must be the invention itself. Ask R Polk about this. If it is ready for patenting, even if it hasn’t been RTP, if you offer it for sale, then that’s a bar. (computer chip)
a.       Ready for patenting then sale triggers the bar. Test:
i.      Ready for patenting by: RTP or Enabling PHOSITA
ii.      RFP is essentially the same as conception, same corroboration requirements.
iv.      Test: Determine critical date: Filing Date. Determine grace period. Now one year back from filing date.
6.     Nonobviousness: 35 U.S.C. § 103
a.       The standard got ridiculously high before Congress codified the new one:
i.      (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made
ii.      Statute kills flash of genius requirement