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Patent
Wayne State University Law School
White, Katherine E.

PATENT ENFORCEMENT WHITE WINTER 2017
INTRODUCTION TO PATENT LAW: PURPOSE
Facilitate the protection of new technology
Keeps record of new technology and improvements
Balance between encouraging innovation and dissemination of knowledge to the public and the avoidance of monopolies which stifle competition
Monopoly for a limited period of time/can license
Granted by countries individually
 
Article 1, Section 8, Clause 8: gives Congress the power “to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” The article merely empowers Congress to do so, they do not have to preserve any rights or set standards for patentability à Plenary Power – complete (absolute) vesting of power in a governing body that can choose to act or not act on a particular subject matter or area.
Grant of power and limitations on the exercise of that power: cannot create patent monopolies of unlimited duration, nor can they “authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or restrict free access to materials already available.”
 
Title 35 of the U.S.C.:
 
§101: Patent Eligibility
Statute: Inventions Patentable: Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
 
§102: Novelty
The patent will only issue if the applicant can demonstrate the novelty of his or her invention. (Has anyone made or described this before?) If patent applicants did not have to demonstrate that their inventions were previously unknown (new), they would actually be able to withdraw information from the public domain by securing patents on pre-existing devices and industrial processes, and the patent system would degenerate into a race to secure monopolies on existing technologies.
 
§103: Nonobviousness
Statute: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
 
Although a device or process may never have been made, used or described in print (therefore it is novel), how to make it may be self-evident to those schooled in the relevant craft or science. In such a case, there is no need to encourage creativity by holding out the reward of a patent. Should the demand for the object or process become more pressing, any number of people will be able to make the object expeditiously and society will avoid the price of the 20 year exclusivity that comes with a patent. For this reason, a patent will not issue if the patent office or the courts conclude that the invention was obvious, given the state of the prior art.
 
§112: Specification Requirements
The specification is the portion of the patent describing the invention. The statute requires that it contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains … to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” 35 U.S.C. § 112. The specification is essentially a narrative description of the invention. The statutory language has been construed by the courts to encompass three discrete requirements—the patent must make an “enabling disclosure,” it must provide a “written description” of the invention and it must disclose the “best mode” known to the inventor.
 
 
§154: Patent Term and Provisional Rights
Granted the right to exclude others from making, using, or selling the invention throughout the United States for a period of 20 years.
 
Origins of the Patent System
March 19, 1474: considered to be the first true patent statute. Venetian statute bears resemblance to the modern law.
European states enacted similar legislation. The most significant being the common law English Statute of Monopolies.
 
The U.S. Patent System (Acts 1790 and 1793):
The first patent act was enacted in 1790. The act created a board, “Commissioners for the Promotion of Useful Arts,” that was authorized to determine whether the invention or discovery was sufficiently useful and important to deserve a patent. The Patent Act of 1790 took place before the Bill of Rights.
Because there was too much work to be done by the three-person board, Congress addressed this issue in the Patent Act of 1793, which adopted a registration scheme. The State Department was now assigned to maintain a registry of patents. Whether a registered patent was valid and enforceable was left solely to the courts.
 
Patent Acts 1836 and 1870:
The 1793 Act sometimes encouraged duplicative and fraudulent patents. The 1836 Patent Act created a Patent Office and litigation under the two statutes frequently culminated at the Supreme Court, resulting in opinions that established nonobviousness, enablement, and experimental use. 
 
Patents in the Twentieth Century:
Federal Courts created stricter tests for “inventiveness” to qualify for a patent. The test at this time was that the invention needed to be a “creative flash of genius.” After WW2, the Patent Act of 1952 replaced an subjective invention test with an objective test for nonobviousness looking to an objective comparison of the claimed invention and the prior art at the time of the invention preformed by one of ordinary skill in the art.
 
The Leahy-Smith America Invents Act:
September 16, 2011: The AIA made many significant changes to the patent system, including:
Shifted the US patent priority system from “first to invent” to the “first inventor to file” system.
 
In a first-to-file system, when more than one application is claiming the same invention is filed, the priority of the right to patent is based on the earlier-filed application. The filing date on the application is most relevant. The filing date is an objective date that is simple to determine, for it is listed on the face of the patent.
 
Provides inventors with a one-year grace period; in some first-to-file systems, prior art can include the inventor’s own disclosure of his invention prior to the date of his application. The GP allows the inventor to publish his invention without fear of its later being used against him as prior art. Applicants’ own publications or disclosure that occurs within 1 year prior to filing will not act as prior art against their applications. Similarly, disclosure by others during that time based on information obtained (directly or indirectly) from the inventor will not constitute prior art.
 
Eliminates interference proceedings à since priority is based on the first application to file, you no longer need interference proceedings to determine who actually invented first. Instead, a derivation proceeding is created to ensure that a person will not be able to obtain a patent of an invention that he did not actually invent. If a dispute arises as to which of the two applicants is the true inventor (as opposed to who invented first) it will be resolved through an administrative proceeding by the Patent Board.
 
Prior Art à will be measured from the filing date of the application and will typically include all art that publically exists prior to the filing date, other than disclosures by the inventor within1 year of filing. Prior art will no longer have any geographic limitations.
 
In a first-to-invent system, priority is established through a proceeding to determine which applicant actually invented the claimed invention first. The date the invention claimed in the application was actually invented is the determinative date. This date is often uncertain, and when disputed it typically requires corroborating evidence as a part of adjudication. An interference proceeding must be conducted at the USPTO to determine who actually invented first.
 
Prior user rights: The legislation establishes a defense to infringement based upon an accused infringer’s prior commercial use of an invention patented by another
 
Post-grant review proceeding: The AIA changes the current system of administrative patent challenges at the USPTO by establishing post-grant review, inter partes review, and a transitional program for business method patents.
 
U.S. Court of Appeals for the Federal Circuit:
Exclusive

trade secret holder could face liability for patent infringement. The law is going to favor the patent holder, who disclosed the invention to the public over the TC guy who did not.
 
The AIA altered this situation in 2011 with the creation of the “prior commercial use” defense (35 USC 273). It establishes a defense if the accused infringer, acting in good faith, made a commercial use or sale of the patented subject matter in the US more than one year before the effective filing date of the patented invention or its date of public disclosure.
Suppose inventor X develops and exploits commercially a new manufacturing process. Inventor X maintains the process as a trade secret. Some years later, Inventor Y independently develops the same process and promptly files a patent application claiming the invention. Even following the enactment of the AIA, Inventor X’s earlier, tradesecret use would not prevent Inventor Y from procuring a patent. However, should the USPTO approve Inventor Y’s patent application, and should Inventor Y sue Inventor X for patent infringement, then Inventor X may potentially claim the benefit of the prior commercial user defense. If successful, Inventor X would enjoy a complete defense to infringement of Inventor Y’s patent.
 
PATENT ELIGIBILTY — 35 USC §101                                                         
Section 101 of the Patent Act defines the subject matter that may be patented.
Issue of law that is reviewed de novo.
 
Distinguishing Patent Eligibility from Patent Utility à Eligibility refers to 101: is this subject matter that can even be patented?
RADER: Danger in confusing eligibility and patentability because judicial rule could foreclose patent application to an entire area of research; generally:
Applying the law of nature is acceptable but patenting the law of nature is not (i.e. OK for Bell to patent use of electricity in his telephone process, not electricity itself)
If too abstract then cannot be patented (i.e. chemical process that transforms raw material is sufficiently definite to limit and define the patent)
Avoid the issue by claiming as either machine or as part of process that transforms something
 
 
35 USC §101 (pre-AIA/AIA) “Whoever invents or discovers any new and useful [1] process, [2] machine, [3] manufactures, or [4] composition of matter or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”
 
 
1) Process: “mode of treatment of certain materials to produce a given result; an act, or a series of acts, performed upon the subject‐matter to be transformed and reduced to a different state or thing.”
 
2) Machine: instrument that consists of parts or elements that are organized to cooperate, when set in motion, to produce a definite, predetermined result (apparatus, mechanism, device, engine)
 
3) Manufacture: “the production of articles for use from raw or prepared materials giving those materials new forms, qualities, properties or combinations, whether by hand labor or machinery; also, anything made for use from raw or prepared materials.” American Fruit Growers, Inc.
 
4) Composition of Matter: “all compositions of two or more substances and all composite articles, whether they be the results of chemical union or of mechanical mixture, or whether they be gases, fluids, powders, or solids.” Mixtures or combinations of naturally occurring substances that have properties different from those of their ingredients.