Patent Outline

Patent Law Outline

Prof Golden

2012

Subject Matter

· any product or process

· includes Man-made living organisms, but non-human.

· Includes business methods. Eg, Amazon one-click.

· Software is okay if it produces TANGIBLE RESULT:

· State Street: transforming data to stock price is “tangible”

· This basically makes ALL software patentable.

· Improvements or new uses.

· But not:

· Laws of nature: gravity

· Abstract ideas: pure math formulas.

· Products of nature

· But purified product okay.

· illegal stuff. Eg, marijuana.

Utility

· Utility != better than prior art. Just:

· Not trivial

· Not mischievous or bad for society.

· But deceptive invention okay. Morality changes with time.

· In chemicals:

· Requires specific benefit from currently available form.

· Not enough if chemical requires further scientific testing

· Policy: do not discourage others from testing.

Anticipation

Novelty

· 102 (a), (e), (g) is the guts of the US first-to-invent system.

· Always concerns situation where someone OTHER THAN the inventor does something before the inventor’s INVENTION DATE.

· Every element was disclosed in a SINGLE prior art reference

· Inherency – if a property is NECESSARILY TRUE, prior art doesn’t need to disclose that.

· Eg, patent app for alloy that is “anti-corrosive” reads on prior publication of the alloy, even if the prior art doesn’t mention it is “anti-corrosive”, b/c it is an inherent property.

· Prior disclosure of SPECIES anticipates later claim of GENUS.

· Eg, if you claim mammals, a cow is a anticipating reference.

· Eg, patent app for alloy “up to 10% iron” reads on prior art that doesn’t mention iron (0%).

· But, GENUS prior art can also anticipate a SPECIES claim.

· If genus is representative of species.

· But not if species if somehow SPECIAL in the genus.

· Special property, or

· Same property but to a surprising degree

· For chemicals look at:

· Degree of structural similarities in genus

· Similar properties in genus

· How many parameters may be changed?

· Predictability of new properties in species?

· Is genus of physical mixtures or chemical compounds? Species in chemical compound genuses are more special.

· 102(a)

· Can’t patent if, prior to invention date, someone else:

· Knew or used in this country

· Published or patented anywhere in the world.

· Prior knowledge

· Fully disclosed:

· Eg, enabling document

· Eg, reduced

· Eg, a speech

· Cg, internal memos, classified gov reports, abandoned patent apps.

· Knowledge must be publicly accessible.

· Eg, a drawing on a table clothe is not considered publicly accessible.

· Must be in this country

· Prior use

· Reduced

· Used for intended purpose.

· Use was accessible to public, cannot be secret

· Public use can be “non-informing.” Ie, does not reveal how it works.

· Printed Publication

· Must be enabling

· Must be printed. But generally, saving in any form is enough.

· Must be published. But generally, publicly accessible is enough.

· Eg, one copy of paper at library, properly indexed is published.

· Eg, few copies circulated a small conference is published.

· 102(e)

· Before X invented, there was an unpublished (secret) pending patent app in the PTO.

· Patent app is treated like a publication, effective on its filing date.

· But patent app must ultimately issue a patent.

· 102(g)

· Before patentee’s invention, “invention” by another who hasn’t abandon, conceal or suppressed the invention.

· “invention” = conception + reduction.

· First to reduce usually wins.

· However, for someone who was second to reduce but first to conceive, he wins if he can show diligence from other inventor’s conception to his own reduction.

· If a date range is given, the last date in the range is used.

· Conception

· Forming a definite, enabling (no undue experimentation) idea.

· In court, conception must be corroborated by some physical evidence.

· Reduction: 3 requirements.

· Reduced invention is SAME as what is claimed.

· Reduc