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Intellectual Property
University of South Carolina School of Law
Snow, Ned

Intellectual Property Snow Fall 2015
·         Patent
o   Stop anyone from doing anything with your invention
o   Shortest of any type: lasts 20 years from filing date
o   Must Be:
§  (1) useful;
§  (2) nonobvious; AND
§  (3) novel
o   PTO must issue patent after application
o   Independent creation is no defense
·         Copyright
o   Exclusive right in the expression to copy
o   Rights to:
§  (1) prepare derivative works;
§  (2) publically perform or display
§  (3) distribute; AND
§  (4) reproduce
o   Lasts life of author +70 years
o   Needn’t register to have a copyright, but you can register (and need to to claim damages in federal court)
o   Must be:
§  (1) in a tangible medium; AND
§  (2) original
o   Independent creation IS a defense
o   Fair use is a defense
o   It is meant to promote learning “useful arts”
·         Trademark
o   Exclusive right to use mark in commerce w/o consumer confusion
o   Meant to protect the consumer, s your actually getting a Nike show when you but the shoe w/ the swoosh on it
o   Lasts as long as it is used, so can last forever
o   Needn’t register
o   Must be:
§  (1) used in commerce to signify the good/service
§  (2) distinct in the market
o   Independent creation is NOT a defense
·         Intro
o   Right to an invention
§  A product/process someone has created
o   What it is:
§  Right to exclude anyone from:
·         (1) using;
·         (2) offering for sale; OR
·         (3) selling the invention in the US
o   Patent must be:
§  (1) novel;
§  (2) nonobvious; AND
§  (3) useful
o   Liability is strict, don’t have to know breaking patent law to be liable
o   To gain a patent over invention, must have:
§  (1) applied for it
·         Application process
o   Patent prosecution
§  Process of applying for a patent w/ the PTO
o   Process consists of:
§  (1) a specification (w/ a written description)
·         Teaches meaning of words & claims
§  (2) drawings (as necessary to understand the invention)
§  (3) a declaration by  the inventor
§  (4) filing fees
§  (2) application has 2 primary parts:
·         (a) Written description
o   Describes the invention, teaches how to use it
o   Enablement
§  The written description must fully enable someone to use the invention & duplicate it
§  Assess the prior art and what knowledge a PHOSITA has
§  Factors to consider:
·         (1) quantity of experimentation
·         (2) lack of direction/guidance presented
·         (3) how close is the prior art?
§  Black letter law:
·         Can a PHOSITA make and use the claimed invention w/o undue experimentation
·         (b) Claims
o   3 parts of claims
§  (1) preamble (specifies the invention)
§  (2) transition
§  (3) elements of the claim
§  The claims are what the inventor is claiming a monopoly right over
·         The broader it is, the more rights you can get but the harder it is to prove
·         Even if one claim fails, the rest of the patent may still be valid
§  How do courts interpret claims?
·         Words take their ordinary & customary meanings to a PHOSITA
·         Intrinsic evidence (look here first)
o   The entire patent application
§  Special meaning of words may be in the specification
§  Integrated document – everything is consistent
·         Extrinsic evidence
o   Must less important
o   Technical dictionaries & treatises
o   Expert testimony
·         Subject Matter
o   Must be proper
o   Inventions that are patentable:
§  Process
§  Machine
§  Manufacture; OR
·         Use of raw material and giving these materials new forms, qualities, or properties
§  Composition of Matter
o   What is NOT patentable
§  (1) Laws of Nature
·         Ex: gravity
§  (2) Abstract Ideas
·         Ex: mathe

ed publication; OR
o   (3) described in a patent or patent application
·         Note: if someone prior abandoned, then doesn’t count against novelty
§  Anticipation
·         Someone files before you or prior art excludes invention if already known to the public or in public use
·         No anticipation if you invent something but then hide it – this would not knock out any subsequent inventors
§  Critical Date
·         Pre-AIA Rules:
o   If filed before March 16, 2013 – critical date is invention date
·         AIA Rules:
o   On/after March 16, 2013 – critical date is filing date
§  Thus, who files first get patent
§  Pre-AIA : what do you have to do to legally invent something?
·         Elements: (kind of)
o   (1) conceived the invention
o   (2) reduced it to practice
·         Conception
o   If someone conceived the idea before you, and has w/ reasonable diligence reduced it to practice & applied for patent (no abandonment, no suppression, etc…), then the first to conceive gets patent
·         Reduction to Practice
o   Actual
§  Invention works for its intended purpose; physically made & tested
o   Constructive
§  Patent application filed (doesn’t have to physically be made)
·         To determine who invented first, ask who RTP’d first
·         Inventor must show reasonable diligence if competing people for first to invent
o   Examples:
§  Pursuing goal in reasonable manner
§  Reasonably everyday problems and limitation excusable
§  If cause of delay isn’t usual, then not reasonable