Intellectual Property Outline

Intellectual Property Fall 2007

I. Areas of Intellectual Property Law
a. Trade Secret – derived from state contract law, common law and statutes; can be anything; does it seem unfair to a person or a court (not really IP)
b. Patents – Source of Authority is the U.S. Patent Act; protect products and processes (class focuses on utility patents)
i. Requirements: novel, useful, non-obvious, enabling
ii. 20 years from the date of filing
c. Copyright – Copyright Act of 1976
i. 1909 Act was separate and incorporated into the 1976 Act
ii. Little bit of state law (audio not protected before 1972)
iii. Cover literary, music, movies, TV, plays, art, and software
iv. All it has to be is an original work of authorship; no registration required it is automatic, but people still register and put a copyright notice
v. Life of the author plus 70 years
d. Trademark – logos, jingles, words, sounds, smells, etc that help to market the goodwill of a product; comes from the power of the interstate commerce clause (not really IP, doesn’t promote any incentives)
i. Authority from the Lanham Act plus state common law
ii. Cannot trademark: generic things (“ice cream”) or things that are functional (having a zipper on jeans)
iii. Can register or just use it and it is automatic protection
iv. Last for the life of the use of the trademark
II. IP Clause in constitution gives the government the power to regulate IP in order to promote science and the useful arts rather than the states.
a. Copyright and patent are not mentioned, but understood

PATENTS

I. Requirements for Patentability
a. Utility
b. Novelty
c. Non-obviousness
d. Enablement
II. Infringement suit
a. File Claim for infringement
b. Other side will almost always claim invalid patent
c. Court will hear invalidity challenge and then the infringement claim
III. Anatomy of a Patent
a. Preamble
b. Transition
c. “Open” Claims: “Comprising”
d. “Closed” Claims: “Consisting of”
e. An in-between format: “consisting essentially of”
f. The Body
g. Means-Plus-Function Elements – builds breath into the claims
h. Jepson Claims – way to phrase the claim for improvements
IV. What can be patented?
a. §101 – 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.
i. Discover – requires human interaction
ii. 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 (requires human interaction)
b. Diamond v. Chakrabarty – man invents new bacteria that can eat oil; Court says that living things are patentable Commissioner of the PTO wants this case to advance a view point that life are not patentable as they understand from Congress; Chakrabarty is the inventor; only litigating one claim of the patent; this claims is most likely not being litigated for a financial gain, rather for change of patent policy through the courts rather than through congress; congress has repeatedly made it clear they don’t want to address these issues by leaving the statues vague for interpretation; the company can already make a lot of money on the first two claims (method of using and production) but are denied the patent on the life themselves
i. groups at this time are lobbying congress to make biological life patentable as well as going through the courts
ii. Case had a huge impact on scientific research by creating patentable cell lines and mice and things
iii. Majority argues that this is good for industry and wants to use it as a wake up call for congress; justifies this by saying that broad language authorizes the court to interpret is as such; Justice Burger assumed Congress would step in, but 26 years later still have not
1. Distinguished former cases where “natural processes” were discovered that were useful
iv. Dissent says lets wait for congress to say “life is patentable”; argue the Plant Variety Protection Act is outside of the patent act and therefore living things fall outside of the Patent Act and must be acted upon separately (bacteria are specifically excluded from the plant acts); views that if they decide the other way big rich biotech companies will lobby congress and they will finally make a decision
v. Policy – everything is patentable unless congress says it is not! (including life); Majority wanted to incentive congress to act and the biotech industry to produce
c. Park-Davis & Co. v. H.K. Mulford Co. – guys finds out how to extract a pure form of adrenaline from animals for therapeutic use etc. It was a superior form of adrenaline. Claims infringement of product patents (pure form and salt related patents)
i. Hand says it is not natural form, it is a special extraction by Takamine
ii. Court reasons that once a good concentrate is there, why get a sub par one; rather reward the first actor
iii. New = novel = unanticipated
iv. Secondary Considerations – bring coherence to applicable patent law, not exactly on point of novelty (but look at society, market consider