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Wayne State University Law School
White, Katherine E.

Patent Law- Fall 2010

Katherine White

Week 1: (August 30-September 3)

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 is used to determine what subject matter is eligible for patenting?

Introduction to Patent Law

pp. 1-27, pp. 40-48

35 U.S.C. §101, 35 U.S.C. §102, 35 U.S.C. §103, and

35 U.S.C. § 112

Patent Eligibility

pp. 58-59

Biotechnology and Products of Nature pp. 59-69

Computer-Related Inventions pp. 76-88, 120-121

Read Bilski v. Kappos, 130 S.Ct. 3218 , 3223-3231(2010) (including headnotes [1]-[16])

1.1- Overview

-Core requirement of the patent law is that the invention must be new.

Patent system originates in the Constitution, Article I, Section 8, Clause 8

Harmonization between different countries’ patent laws is found in the Paris Convention of 1884. As of April 2002, 163 nations were signatories.

Patents should provide the examiner and later readers with the following:

-A detailed technical description of the invention

-The extent to which the disclosed technology is regarded as proprietary,

-The basis for the examiner’s decision that the patented invention presents a patentable advance over previously known technology,

-The term of the patent,

-An individual who can be contacted for purposes of licensing or obtaining further technical information.

Utility Patent: Most common form. Utility patents pertain generally to technological products and processes. Utility patents must fully disclose and distinctly claim the invention. 35 USC 112. To be patentable, an invention must be useful, novel, and nonobvious.

-To be declared useful, an invention must be operable and provide a tangible benefit.

-To be declared novel, an invention must not be fully anticipated by a prior patent, publication, or other knowledge within the public domain.

-To be nonobvious, an invention must not have been readily within the ordinary skills of a competent artisan at the time the invention was made.

-A patentee bears responsibility for monitoring its competitors to determine whether they are using the invention or not.

-Maximum term of utility patent protection is ordinarily 20 years.

Design Patents: May be awarded for “any new, original, and ornamental design for an article of manufacture.” 35 USC 171. Must be primarily ornamental in character.

Plant Patents: Can be issued for distinct and new varieties of plants that have been asexually reproduced.

Trademarks: Any word, name, symbol, or device, or any combination thereof used to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Copyrights: May extend to any work of authorship. Literary, musical, dramatic, choreographic, graphic, audiovisual, and architectural. Eligible for protection as soon as they are recorded in a sufficiently stable form.

Semiconductor Chip Protection: Pretty self explanatory.

Trade Secrets: Protects secret, valuable business information from misappropriation by others. Principal gatekeeper to trade secret status is that the information must have been subjected to reasonable efforts to maintain its secrecy.

Patent Eligibility: An invention is eligible for utility patent protection if it falls into one o the four statutory “useful arts:” processes, machines, manufactures, and compositions of matter.

Diamond, Commissioner of Patents and Trademarks v. Chakrabarty, p. 59

-Just because something is alive doesn’t preclude it from patentability.

-Respondent’s invention is patentable- “his claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter- a product of human ingenuity ‘having a distinctive name, character, and use.’” His discovery is not nature’s handiwork, but his own; accordingly it is patentable subject matter under sec. 101.

Gottschalk v. Benson, p. 77

-Invention is a process for converting signals from binary coded decimal form into binary.

-“It is conceded that one may not patent an idea…but in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practically application except in connection with a digital computer, which means that if the judgment below (affirming p

ve ESTs for maize. PTO rejected because the utility of the claims is not unique to these ESTs, but is common to all ESTs.

-Whether an application discloses a utility for a claimed invention is a question of fact. Standard of review for PTO board’s determination is for substantial evidence.

-Ct: “An application must disclose a use which is not so vague as to be meaningless.” “In addition to providing a ‘substantial’ utility, an asserted use must also show that that claimed invention can be used to provide a well-defined and particular benefit to the public.”

-Ct: The ESTs are not comparable to a microscope, not general enough in application. Genes that are specified by ESTs need to have an identifiable function, it seems.

Week 3: (September 13-17)

What is the difference between analyzing whether there is anticipation versus a statutory bar? Is one a subset of the other?

How are statutory bars applied differently depending on the actor?

What is Public Use? What does On Sale mean? Is Experimental Use an exception to Public Use?


Anticipation: Generally pp. 155-178

Statutory Bars

Statutory Bars: Generally pp. 180-183

Statutory Bars: Applicant Activities: 102(b) Public Use pp. 183-193

Statutory Bars: Applicant Activities: 102(b) Experimental Use pp. 193-200

Statutory Bars: Applicant Activities: 102(b) On Sale pp. 200-209


Section 102- novelty expressed in (a), (e), and (g), and the “statutory bars” of (b) and (d). Key distinction between them is the time at which patent-defeating activity occurs. Novelty is keyed to the time the inventor completed the invention- statutory bars are keyed to filing date.

Titanium Metals Corp. of America v. Banner, p. 157

-Invention is a specific alloy.