PATENT OUTLINE
BLACK LETTER
Constitution
The Congress shall have the power to promote the progress of science and useful arts, by securing for all times to authors and inventors the exclusive right to their respective writings and discoveries
§ 100: Definitions
Invention: invention or discovery
Process: process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material
United States: USA, territories, and possessions
Patentee: not only the patentee, but his successors in title to patent
Third party requestor: a person requesting ex parte reexamination under § 302 or inter partes reexamination under § 311
§ 101: Patentable Subject Matter
Categories of inventions
i. Process
ii. Machine
iii. Manufacture
iv. Composition of Matter
v. Improvement thereof
Requirements
i. Novelty
ii. Utility
§ 103: Nonobviousness
No patent if
i. The differences between the subject matter sought to be patented and the prior art are such that the subject matter
1. AS AWHOLE would have been obvious
2. AT THE TIME THE INVENTION WAS MADE to a
3. PERSON HAVING ORDINARY SKILL IN THE ART to which said subject matter pertains
§ 154: Contents, Provisional Rights, and Terms of Patent
Required Contents
i. Short title
ii. Grant of Right to exclude others from…
1. Making
2. Using
3. Offering for sale
4. Selling
5. Importing
iii. …patented product inside the United States OR if invention is a process, Right to exclude others from…
1. Using
2. Offering for sale
3. Selling
4. Importing
iv. …products made by patented process
Additional Rights
i. Right to obtain a reasonable royalty from any person who, during the period beginning on…
1. The date of publication of the application for such patent under § 122(b), or
2. In case of an international application filed under the PCT designating the US, the date of publication of the application
ii. …And ending on the date the patent is issued
1. Makes, uses, offers for sale, or sells in the US the invention as claimed in the published patent applicationor imports such an invention into the US or
a. If the invention as claimed is a process, uses, offers for sale, or sells in the US or imports into the US products made by that process AND
2. Had actual notice of the published patent application and,
or whether they be gases fluids, powders, or solids”
iv. Note: categories are not mutually exclusive
1. A genetically altered organism is both a manufacture and a composition of matter (Diamond v. Chakrabarty 1980)
Process
i. Method of
1. Making
2. Using
3. Doing
ii. Something useful
Improvements
i. Terminology
1. “Blocking patents”
a. When A has a patent on a product and B has a patent on an improvement of that product, neither A, nor B, nor anyone else can make the improved version without consent of both A and B.
b. A and B must come to some type of agreement for improved product to be made, sold, imported, or offered for sale.
i. Most common type of agreement is “cross licensing”
c. Illustration of patent’s substantive power: right to exclude.
Non-patentable subject matter
Traditional categories of non-patentable subject matter
i. Products
1. Immoral products
2. Algorithms
a. Established by Benson (SC 1972)
