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Wayne State University Law School
White, Katherine E.

Patent Law – White – Fall 2015

Week 1:

What are the differences between the various types of intellectual property? What do they protect or protect against?
Are intellectual property rights national in scope?
What is the difference between patent eligibility and patent utility?
What legal reasoning (statutes, common-law, treaties, etc.) is used to determine what subject matter is eligible for patenting? 101, process, machine, manufacture, or composition of matter

Chapter 1. Introduction

1.1: Overview of This Casebook – and class notes

AIA – Obama signed into law – September 16, 2011 AIA signed into law
AIA – Takes effect on new patents starting March 16, 2013

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

Make invention w/o authority of the patentee commit patent infringement

The purpose of patent law
facilitate protection of new technology
keep record of new technology and improvements
balance between encouraging innovation and dissemination of knowledge to the public
monopoly for a limited period of time
17 to 20 years – applications filed on or after June 8, 1995 – Uruguay Round Agreement Act
US Court of Appeals for the Federal Circuit
Adopts CCPA and the Court of Claims as precedent (predecessor courts)
1855: Court of Claims (against US), later renamed in 1945: US Court of Claims
1909: US Court of Customs Appeals, patents appeals – Court of Appeals for the District of Columbia Circuit
1929: US Court of Customs and Patent Appeals
1982: US Court of Customs and Patent Appeals and the US Court of Claims abolished and picked up by the FC
The old CC&PA – 5 judge body always sat en banc
When the FC (up to 12 judges) when sits en banc it has authority to overrule any prior ruling of the FC or its predecessor courts.
When sitting customarily (3 J panel), the FC lacks authority to depart from decisions of earlier panels
Patent Prosecution (Acquisition)

Pre-AIA: PTO Examiner->BPAI->DCDC or FC->SC
Post-AIA: PTO Examiner->PTAB->EDVA or FC->SC

Patent Enforcement (Infringement)

Federal District Court ->FC->SC

Plants are regulated under 3 different federal legal regimes:
USPTO: Plant patents for asexually reproduced plants 35 U.S.C. § 161-164
Dept. of Agriculture: Plant Variety Protection Act (PVPA) for sexually reproduced plants 7 U.S.C. § 2321 et seq.
USPTO: Utility patent under 35 U.S.C. § 101 – See JEM v Pioneer
UTPTO head was called the Commissioner, now called the Director of IP
Patent edibility: subject matter and utility – European Union treated differently (by exclusion instead of inclusion) excluding the following categories: a) discoveries, scientific theories, and mathematical methods, b) aesthetic creations c) schemes, rules, and methods for performing mental acts, playing games or doing business, and programs for computers, and d) presentations of information

1.2: Foundations of the United States Patent System

Bonito Boats, Inc. v. Thunder Craft Boats, Inc. – 1989

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.”
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
1st patent act established agency known as “commissioners for the promotion of useful arts”
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
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? NO
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.

Dual Grant – Constitutional provision grants power to establish both a copyright system and a patent system
Patent Term – Utility patent has a term of 20 years measured from date of filing patent application.

1.3: Origins of the Patent System

1.3[a]: The Statute of Monopolies

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.
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…

1.3[b]: The US Patent System

The Constitution & Early Patent Laws

August 18, 1787 – Charles Pinckney proposed powers at the Constitutional Convention including granting patents for useful invention.
Convention accepted the language on September 5th.

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.
The 1790 & 1793 Acts
Patent Act of 1790 – George Washington 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

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 – Article 4 (21 U.S.T. 1583)

Paris Convention for the Protection of Industrial Property – 1884
By 2002, 163 nations signed Paris Convention
World Intellectual Property Organization (WIPO) located in Geneva, Switzerland administers the international agreement.
Paris Convention commits its signatories to the principle of national treatment
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.
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.
Six months after the application is the deadline for trademarks, designs and copyrights
Article 4 is implemented in 35 U.S.C. § 119(a). One-year grace period must be respected.


Patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
Consistency across countries. Can’t have one standard or anti-standard for specific countries

Patents in the 20th Century

US Developments

Depression Era – treating patent licensing and enforcement like antitrust violations.
Courts became stricter and stricter “flash of creative genius” test from Cuno Eng v. Automatic
World War II 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

World Patent Harmonization

1.4: Forms of Patent Protection

Utility Patents

Patent pertaining to technological products & processes
Do not rise automatically
Must prepare & submit application to USPTO
USPTO Examiners assess merit for award of patent
Useful, novel, & nonobvious
Proprietor obtains right to exclude others from making, using selling, offering to sell, or importing into the US
Not self-enforcing, patentee bears responsibility to monitor use

Usually need to commence litigation in federal court for inappr

Commercial Value

Information must be sufficiently valuable to provide an actual or potential economic advantage over others to qualify for trade secret protection. Restatement 3rd, Unfair Competition §39, comment e.


An enterprise possessing trade secrets will be protected against misappropriation 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.

EI DuPont deNemours & Co v. Christopher

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


Modern Rule: injunctions are appropriate only for the period of time 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.

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.

Chapter 2. Patent Eligibility – 101

35 USC 101 of the Patent Act – A person who “invents or discovers any new & useful process, machine, manufacture, or any composition of matter, or any new and useful improvement thereof, may obtain a patent, therefore, subject to the conditions, and requirements of this title”
Eligibility is based on the subject matter of the “invention” and utility is how useful the invention is and how well it is disclosed –specifically. Utility rejections could also be made under 112(a)
Even though compliance with § 101 is a question of law, it is one that will often be intertwined with questions of fact.
There is a statute 42 USC 2181 for not patenting nuclear technology – Congress said NO
Prohibition against cloning humans and patents against cloning