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Wayne State University Law School
White, Katherine E.

Patent Law- Professor White-Winter 2012
1.       Introduction and America Invents Act
a.       Theories
                                                               i.      Patent law comes from US Constitution Art. 1, Sec. 8, Cl. 8 where Congress has the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
                                                             ii.      Patent law has a record-keeping purpose. This makes sure that there’s a record of what people have invented so others can make improvements.
                                                            iii.      Patent law also facilitates the protection of new technology.
                                                           iv.      Patent law recognizes a balance between encouraging innovation and dissemination of knowledge to the public (i.e. disclosure).
                                                             v.      Monopoly
1.       Patent law grants a monopoly to those who obtain a patent- a patent gives the patent owner the right to exclude others from making, using, offering for sale, or selling the invention within the US or importing the invention into the US.
2.       This right is LIMITED because utility patents only have a duration of 20 years from the date of filing.
3.       This limited duration may be problematic in different patentable subject matter. It may be too long for software, but not long enough for pharmaceutical companies (because they must get FDA approval of a drug only after they have received the patent).
                                                           vi.      Good fences make good neighbors: It is important to be clear of what the “fences” (boundaries) of an invention are.
b.      Other Patent Systems
                                                               i.      The US was the first country to have the first to invent system.
                                                             ii.      Every country has its own patent system. E.g. Some may have an absolute novelty system- In Europe, if an invention is published anywhere in the world, the rights are lost forever, whereas in the US, an inventor may still have one year to file and gain his rights.
                                                            iii.      European Union and European Patent Convention
1.       More countries are in the European Patent Convention. This is where the European Patent Office performs an examination and states whether the matter is patentable and then the inventor picks country to apply to. The patent must translated in each country, which has presented issues.
c.       US System
                                                               i.      Basic Statutes- An invention must meet the requirements of all statutes to be issued.
1.       35 USC 101: Patent Eligibility
2.       35 USC 102: Novelty
3.       35 USC 103: Nonobviousness
4.       35 USC 112: Specification Requirements
5.       35 USC 154: Patent Term and Provisional Rights
a.       A provisional patent application may be filed without claims to put people on notice of what is trying to be patented. An inventor may sue against somebody infringing rights after filing a provisional.
b.      An actual patent application must be filed within a year after the provisional is filed.
c.       Remedies include lost profit damages or reasonable royalty damages. Lost profit damages are generally larger.
                                                                                                                                       i.      287 covers damages and 283 covers injunctions.
d.      ONLY reasonably royalties are available during the period of a provisional patent.
                                                             ii.      Patent Prosecution
1.       This includes the dialogue the inventor has with the United States Patent and Trademark Office (PTO). Prosecution is trying to get a patent through the PTO while litigation is defending a patent.
2.       Federal Circuit
a.       The US Court of Appeals for the Federal Circuit is the exclusive appellate jurisdiction in patent cases. It is separate from the numbered regional circuits.
b.      The Federal Circuit has national jurisdiction and is located in Washington, D.C.
c.       The court has 12 active judges, but cases are generally heard by 3 judges.
d.      The court also adopts its predecessor court’s cases as precedent- this consists of the Court of Customs and Patent Appeals (CCPA) and the Court of Claims.
3.       Pre-AIA (Currently)
a.       PTO Examiner → PTO Board of Patent Appeals  → District Court for the District of Columbia (DCDC) OR Federal Circuit → Supreme Court
b.      Administrative judges are appointed by the Secretary of Commerce because the PTO is within the US Department of Commerce.
c.       Post-AIA
                                                                                                                                       i.      PTO Examiner → Patent Trial and Appeal Board → Eastern District of Virginia (EDVA) OR Federal Circuit → Supreme Court
                                                            iii.      Patent Enforcement (Infringement)
1.       Federal District Court → Federal Circuit → Supreme Court
                                                           iv.      Distinction From Other Intellectual Property Areas
1.       Trademarks
a.       TMs distinguish between sources or brands.
b.      TMs are perpetual in duration so long as they continue to be proven.
c.       Common law TM rights may be only regional as opposed to national.
2.       Copyright
a.       Copyrights protects others from making copies of a work.
b.      Independent creators may still have rights in a work which is similar, but patents are much more exclusive.
3.       Trade Secrecy
a.       Patenting costs a lot of money so trade secrecy may be more viable in some cases.
b.      Some things are not patentable but may be valuable. E.g. manufacturing techniques, customer lists.
c.       There is NO federal protection for trade secrets- once a secret is disclosed, there is no protection.
d.      America Invents Act
                                                               i.      In March 2013, the America Invents Act will go into full effect. The patent system will move from a first to invent system to a first to file system. Defenses to patent infringement will also be expanded for commercial uses.
                                                             ii.      The AIA was signed on September 16, 2011 by President Obama.
                                                            iii.      The first to file system means that a patent will be granted to the first INVENTOR to file. This will also include derivation proceedings to determine whether the filer is a true inventor.
                                                           iv.      The system will also include changes to the novelty requirement and corporations will be able to  have a patent in their name.

he totality of the invention, not just the algorithm to find the invention to be patentable..
                                                           iv.      In re Bilski (Fed. Cir. 2008): The invention was a business method related to hedging risk in consumer commodities trading. The court determined that the machine or transformation test- whether a process is tied to a particular machine or apparatus or it transforms a particular article into a different state or thing, was the applicable test here. The court refused to find that business methods could not be patentable.
1.       In 2010, the Supreme Court REJECTED the machine or transformation test, but upheld the patent.
                                                             v.      Europe does not state what is patent eligible; it merely defines what is not eligible.
3.       Utility
a.       General Principles
                                                               i.      Under 101, an invention must have some utility, but this is not a hard burden to overcome. The invention does NOT necessarily have to be better than the prior art. “Better” is subjective.
                                                             ii.      Lowell v. Lewis (D. Mass. 1817): Morality used to be considered in patenting, but now there are patents allowed on slot machines, gas chambers for execution, etc. Nuclear energy is still not patentable because this should not be in the public domain.
                                                            iii.      Juicy Whip, Inc. v. Orange Bang, Inc. (Fed. Cir. 1999): The patented invention was for a machine which tricked consumers into thinking it was making the juice, when it actually came from a source located below the machine. The court found it wasn’t the PTO’s job to monitor trade practices because that is the Federal Trade Office’s job. The PTO just must make sure an invention is useful. Note: This case is ironic because D is trying to invalidate a patent based on morality when D is infringing that patent.
b.      Utility Requirement in Chemistry and Biotechnology
                                                               i.      Brenner v. Manson (U.S. 1966): The invention here was for steroids that inhibited tumors. This is an interference action, because Manson claims that he discovered the invention first. The court found that the process only had the demonstrable utility to aid in research and that it was not patentable. This opinion may be wrong- there are other places within the statute where patentability may be questioned.
1.       European view: There isn’t a difference between usefulness and eligibility, but there are emotional and public policy reasons why utility and subject matter are challenged.
2.       CCPA view: As long as a process produces a product then it is useful. An inventor may not know the full utility at the time of patenting.