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Patent
Wayne State University Law School
White, Katherine E.

WHITE – PATENT LAW – FALL 2013
Chapter 1. Introduction
Overview of This Casebook
·         Title 35 of United States Code – In use since 1952
·         35 USCA 101 – starting point in code – covers patent eligibility
·         101 – requires invention to be “useful” to receive patent protection
·         Invention must be new
·         Invention cannot be obvious to a person having ordinary skill in the art – Section 103 has statutory test
·         Patents do not arise w/o significant involvement of an administrative agency (unlike other forms of IP)
·         Patent Prosecution – Process for inventors to obtain protection
·         Patent – proprietor obtains right to exclude others practicing the invention in the US
o   Make invention w/o authority of the patentee commit patent infringement
 
Foundations of the United States Patent System
·         Bonito Boats, Inc. v. Thunder Craft Boats, Inc.
o   Summary: Decision of the United States Supreme Court holding a state anti-plug molding law preempted because it partially duplicated and therefore interfered with federal patent law.
o   Article I, §8, cl. 8 – Constitution gives Congress power “to promote the Progress of Science & useful arts, by securing for limited Times to Authors & Inventors the exclusive right to their respective writings & discoveries.”
o   Congress may not create patent monopolies of unlimited duration, nor may it “authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to strict free access to materials already available.” Graham v. John Deere
o   1st patent act established agency known as “commissioners for the promotion of useful arts”
o   Patent Statute: Protection is offered to “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new & useful improvement thereof.” 35 USC 101
o   Issue: May a state enact a law that provides monopoly rights to an invention or design that would otherwise be in the public domain under Federal Patent law?
o   Rule: Any state law that interferes with the patent monopoly system established by the U.S. Constitution and codified in the Patent Laws is invalid.
·         Notes:
1)      Dual Grant – Constitutional provision grants power to establish both a copyright system and a patent system
2)      Substantive Constitutional Patent Law – constitutional standard of “invention” and argument that it is unconstitutional to have first to file law.  The clause itself did not give nor preserve any rights for inventors, it empowered congress.
3)      Promoting Progress
4)      Patent Term – Utility patent has a term of 20 years measured from date of filing patent application. 
5)      Inventorship – issue with inventors creating inventions while under contract with employer.  Who has ownership of the invention and resulting patents?
 
Origins of the Patent System
·         The Statute of Monopolies
o   17th Century – English Crowd – long history of awarding importation franchises & other exclusive rights. Later on abused by Elizabeth I and James I to favored subjects.
o   Statute of Monopolies – authorized issuance of “letters patent” for 14 years or under, sole working or making of any manner of new manufactures within this realm, to the true and first inventors of such manufacture…
·         The US Patent System
§  Patent tradition established by SOM continued in New World Colonies
o   The Constitution & Early Patent Laws
§  State grants of patents lead to potential interstate conflicts among competing inventors
§  August 18, 1787 – Charles Pinckney proposed powers at the Constitutional Convention including granting patents for useful invention.
§  Convention accepted the language on September 5th. 
o   In Re Bergy
§  Summary: The Court of Customs and Patent Appeals analyzes the history and purpose of Article I, section 8, clauses 8 and 18 which states that Congress shall have the power to promote scientific progress by granting exclusive rights to inventors.
§  Rule: Congress shall have the power to grant inventors the exclusive right to their inventions & to make all laws necessary & proper to execute that power.
o   The 1790 & 1793 Acts
§  1790 – George Washing addressed IP in his State of the Union address.
·         3 member board assigned – but much too onerous for the small amount. 
§  Patent Act of 1793 – abandoned examination for simply registration
·         Whether a registered patent was valid & enforceable was solely up to the courts
o   The 1836 & 1870 Acts
§  1836 Act created a Patent Office within the Department of State
§  1870 Act mostly the same
§  Litigation under these 2 statutes frequently went to the Supreme Court where opinions established non-obviousness, enablement, experimental use, and other fundamental doctrines of contemporary patent law.
·         The Paris Convention
o   Paris Convention for the Protection of Industrial Property – 1884
o   By 2002, 163 nations signed Paris Convention
o   World Intellectual Property Organization (WIPO) located in Geneva, Switzerland administers the international agreement.
o   Paris Convention commits its signatories to the principle of national treatment
o   Signatories agree to treat foreign inventors no worse than domestic inventors in their patent laws, so long as these foreign inventors are nationals of a Paris Conventions signatory state.
o   International Priority System – allows an inventory to file a patent application in one Paris Convention signatory state, which is usually inventor’s home country.  If the inventory subsequently files patent applications in any other Paris Convention signatory state within 12 months, overseas patent-granting authorities will treat the application as if it were filed on the first filing date.
·         Patents in the 20th Century
o   US Developments
§  Depression Era – treating patent licensing and enforcement like antitrust violations.
§  Courts became stricter and stricter à “flash of creative genius” test from Cuno Eng v. Automatic
§  World War II à Forced US to innovate & experiment.  Became world leader.  Needed to continue incentives.
§  Patent Act of 1952 – subjective invention test replaced with objective test for non-obviousness
o   World Patent Harmonization
 
Forms of Patent Protection
·         Utility Patents
o   Patent pertaining to technological products & processes
o   Do not rise automatically
o   Must prepare & submit application to USPTO
o   USPTO Examiners assess merit for award of patent
o   Useful, novel, & nonobvious
o   Proprietor obtains right to exclude others from making, using selling, offering to sell, or importing into the US
o   Not self-enforcing, patentee bears responsibility to monitor use
§  Usually need to commence litigation in federal court for inappropriate use
o   Maxim term is 20 years from date application is filed
·         Design Patents
o   Awarded for “any new, original, and ornamental design for an article of manufacture”
o   Chief limitation on patentability of designs is that they must be primarily ornamental in character
o   Must file application with PTO to obtain protection
o   Generally subject to same considerations as utility: originalityy & novelty
o   Valid for up to 14 years
o   The design patent instrument relatively straightforward: one or more drawings illustrating the proprietary design
·         Plant Patents
o   Townsend-Purcell Plant Patent Act – allows plant patent to issue for distinct & new varieties of plants have been asexually reproduced.  Genetically identical to its parent.  Includes grafting, budding, the use of cuttings, layering, and other methods.
·         Patent-Like Plant Variety Protection
o   Plant Variety Prot

iation of those trade secrets by others.
§  Courts will grant relief where defendant violated either express or implied obligation of confidentiality.
§  No express promise of trust was exacted from the defendant – but a relationship of trust could be implied from the facts & relief granted. Smith v. Dravo Corp.
o   EI DuPont deNemours & Co v. Christopher
§  Facts: DuPont sued the Christophers alleging that the Christophers had wrongfully obtained aerial photographs revealing DuPont’s? trade secrets which they then sold to an undisclosed 3rd party. DuPont? argues that it developed a highly secret but unpatented process for producing methanol and that the aerial photographs taken by the Christophers was the plant designed to produce methanol by this secret process. Because the plant was still under construction, parts of the process were exposed to view from directly above the construction area and DuPont? alleged that a skilled person could deduce the secret process for making methanol.
§  Rule: One who discloses or uses another’s trade secret, without a privilege to do so, is liable to the other if:
·         He discovered the secret by improper means, or
·         His disclosure or use constitutes a breach of confidence reposed in him by the other in disclosing the secret to him.
·         One need not breach a confidence to misappropriate a trade secret, as long as it was acquired by improper means.
§  Issue: Whether aerial photography of plant construction is an improper means of obtaining another’s trade secret? 
§  Holding: Yes, aerial photography of plant construction is an improper means of obtaining another’s trade secret.
§  Black Letter: To obtain knowledge of a process without spending the time and money to discover it independently is improper unless the holder
·         Voluntarily discloses it; or
·         Fails to take reasonable precautions to ensure its secrecy
o   Notes
§  Remedies
·         Modern Rule: injunctions are appropriate only for the period of tiem that the subject matter of the trade secret would have remained unavailable to the (D) but for misappropriation.
·         Courts have demonstrated flexibility by fashioning monetary remedies for trade secret misappropriation.  Typically award an amount equal to either the loss suffered by the trade secret holder, or the gain realized by misappropriator, whichever is greater.
o   Monetary damages are ordinarily limited to the time that the misappropriated information would not have been available otherwise to the defendant. Engelhard Industries v. Research International Corp.
§  Trade Secrets & Patents
·         Law of trade secrets encourages withholding patentable inventions is at odds with fundamental precept of patenting for dissemination of knowledge under purpose of patent law.
·         Patent law does not favor trade secret holders.
·         Patent law does not apply to full array of valuable information that may be subject of trade secret law.
§  Federal Preemption
·         Courts have ruled that trade secret protection may coexist alongside the patent and intellectual property laws.