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Intellectual Property
University of South Carolina School of Law
Bartow, Ann

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


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

Edison is complaining about an undisclosed best mode
4. Argue they didn’t know the best mode and court says GOT YA! (even though it was undiscovered)
5. Court strike patent down as over broad because it does not enable Edison’s invention; written description not specific enough
6. Over breadth is only usually a problem if it reads on the previous art; court reads it as not disclosing best mode
f. Written Description
i. The Gentry Gallery, Inc. v. The Berkline Corp. – sectional sofa with recliners that both pull out next to each other instead of across each other with a console in the middle that works as a coffee table; district court said that patent is valid and that Berkline did not infringe
1. have the controls away from the consol with a flip down seat to make a table
2. claim they enabled this
3. the written description limits the claim with a fixed console
4. Claim that since the console moves it does not infringe
5. Since he had not claimed the two way chair going the same way, he should not have claimed it with a fixed console with controls on it
6. Sproule admitted he did not consider putting the controls off of the console
7. Court says the claims are valid of the prior invention’s claims were more specific
g. Steps in litigation:
i. Markman Hearing: claim construction for the subsequent litigation
ii. Hear validity issues
iii. If still valid, infringement issue(s)
iv. Damages
h. Best Mode Requirement (preferred embodiment)
a. Under §102(b) – you can screw up your own claims due to statutory bars
b. Even if you are first to invent and keep it secret and later someone releases something (an article) and it has been out longer than a year, then you are out of luck.
c. These Bars:
i. increased reliability of public information
ii. faster dissemination of new information and claims
iii. early termination of Patent rights
d. Novelty No patent if, before date of invention, the invention was—
i. Known or
ii. Used
1. [c] by others
2. [d] in this country or
if, before date of invention, the invention