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

Intellectual Property Survey – Bartow
I.                   Patent Basics
–          All Patent Law comes from the Patent Act
–          State laws have no effect. Supreme Court has reaffirmed this.
–          Patents last for about 17 years. They technically expire 20 years after the date of filing but it takes about 3 years to prosecute the patent.
A.    Purpose of Patent System
1.      to promote scientific research and useful arts by granting a monopoly (the incentive) to newly discovered things
B.     Claims – are the heart of the patent
C.     When you apply for your patent, you tell the examiner in your claim why your invention meets all the requirements to get a patent (utility, novelty, nonobviousness). You don’t even have to build your invention before you get a patent. Therefore, the words are all that mattered.
1.      Independent Claims –
2.      Dependent Claims –
D.    Specification – describes and enables the patented product/process
E.     Pioneering Patents – the first patent of a new thing
F.      Improvement Patents – patents an improved product/process of an already known thing
G.    Federal Circuit – this court has jurisdiction over all patent cases, so all appeals must go to it (from either (1) the PTO – registration of patent or (2) a District court – infringement/injunction cases)
H.    Patent law has its own appellate court and it is not geographically based. All patent appeals go to the Federal Circuit. The federal circuit hears patent appeals from all over the country. We can’t tolerate as a nation too many circuit splits so we want uniform interpretation of issues. We don’t want a patent that is valid in one state but not in another state. Some circuits initially took a hasty view of patents and that led to a lot of forum shopping. So some people’s goal was to get patent valid at a higher frequency.
I.       At the PTO you can have an examiner look at it to see if they say it’s valid, if they say no you can appeal to the board of patent appeals, if they say no, you can go to the federal circuit, if they say no, you can go to the SCOTUS. This is for validity of whether a patent should issues.
J.       For patent litigation, you start in a federal district court, appeal to the federal circuit, and then to the supreme court.
II.                Elements of Patentablity
A.    Utility – §101
1.      generally, utility is not litigated to much
2.      invents OR discovers!
3.      For the most part all utility means is that something must be operable.
4.      Subject Matter Patentable:
a.       §101 – “any new and useful process (sometimes called a method patent), machine, manufacture, or composition of matter, or … improvement thereof”
b.      efficiency does not matter (patentee is not required to show that it is commercially viable)
c.       if claim seems impossible, the PTO will deny claim (ie: cold fusion, time travel)
d.      “Useful”
–          p . 144 Brenner v. Manson – ct did not to allow patent b/c the product was not useful (old case)
–          There’s a process that makes the product the inventor says it does but we don’t know what the product is good for.
–          Arguments for issuing a patent: what does it hurt? If it’s a useless patent no one is harmed. If it’s a useful patent then great!
–          Arguments for not issuing a patent: if there really is a good use for the product but issues a patent to this person, there will be no motivation for anyone else to research what this product could be used for. The person who actually discovers what this product can do should be the one to get the patent.
–          This was the high-water mark for utility.
–          Now, if the process works, it’s patentable. Even if no one would ever use this process or product.
–          A majority of cases follow Harlan’s dissent in this case
–          now – as long as process produces the product patentee says it does, then it is useful to make the product (even if that product is not useful) – solves the problem it is directed at
–          3 types of uses:
(2)    any use
(3)    solves the problem it was intended to solve
(4)    minimal social benefit (or at least no social harm)
e.       Improvement Patents – you only get a patent on the improvement
f.        P. 149 In re Fisher (2005): a patent shouldn’t be a hunting license. You shouldn’t be able to get a patent before you figure out what the product is useful for. You shouldn’t get a patent to buy yourself time to discover what the product is good for. There should be a race to find out what something is good for, not to just find something. Fisher may know what the product is good for but is trying to get a patent and a trade secret which is not supposed to be possible under the current patent system.
g.      Living Organisms – (Chakrabarty: oil-eating microbes that can clean up a relatively small oil spill. He got the process patented. At that point, he had a monopoly on using the microbes. They kept fighting for a patent for the microbes in case the microbes did something else (like grow hair) they would need a monopoly on the microbe to have a monopoly on that other use. Diamond was the commissioner of the PTO) – microorganisms made by man are patentable (read – microorganisms changed by man are patentable)
–          not enough to combine two things of nature
–          enough to change natural state of thing in nature
–          with all pre-existing things of nature:
–          process claims are allowed
–          product claims are questionable – patentee must change the thing’s natural sta

that they could extract it in a more pure form, it was subject to a patent.
c.       Bartow doesn’t think this promotes people from researching more. She disagrees that giving property rights to one inventor gives incentives to other inventors to invent more. Bartow thinks that people won’t try to get a process patent if they find another way because if the pure adrenaline is patented, then they are infringing if they use it.
d.      Essentially we went from lousy extraction to good extraction. Learned Hand says the reason we got to good is because of the incentive of a patent BUT also because of the patent incentive, we’re never going to get to great extraction. No incentive to try to go to great because you’re not going to get it patented. And no motivation for the patent holder to go to great because he can just sit back and let the money roll in. Learned Hand just should have allowed the process patent and not the product patent.
e.       Pure adrenalin got patented – Hand claims that extensive property rights are the best way to incentivize scientists to do more research on removal process because they then couldn’t use what they extracted.
f.       Good example of a case because it sets up the different philosophical problems in patent law.
g.      The patent got us from lousy to good, but because of the patent we’ll never get from good to great.
h.      P.138 note 5: process for extracting natural product is patentable, not enough to discover a plant or a mineral, if a plant or mineral is created then it would be patentable.
i.        Note 6: surgical techniques: §287(c): you can’t enforce the patent against a medical practitioner. You don’t want one doctor to have a monopoly on a surgery. There is something immoral that says you have to license the better surgical procedure OR they could say no that you can’t use the procedure. You shouldn’t have to worry, as a doctor, about choosing the best procedure for your patient because of patents. BUT you can patent life-saving drugs and enforce those patents.
6.      Process v. Product Patents
a.       Processes are almost always patentable
b.      Can get a process patent on a new use of an old product (even though you c/n get a product patent on the product)