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Wayne State University Law School
White, Katherine E.

Contract theory of patents: Disclosure of a technological advance in exchange for the right to exclude others from employing it. Encourage innovation. Disclosure for limited monopoly of 20 years, then public domain.
Requirements for patenting. You are entitled to a patent unless your invention is covered by §102 (a)-(g), or is obvious under §103.
Patent term. 
Before June 8, 1995 – issue date + 17 years
After June 8, 1995 – filing date plus 20 years
Change is due to ratification of the Uruguay Round of GATT. Before that, US was only country that counted patent term from date of issue instead of filing date.
Historical Developments in patent law.
§         Depression era. Patents found invalid under antitrust laws; very hard to receive patent.
§         Post-depression and world wars. Misplaced antitrust priorities and subjective inventiveness tests (“flash of creative genius”) eroded the incentives of the patent system
§         Patent Act of 1952. “flash” replaced with §103
§         1960s – 1970s – confusion in the courts over patent cases
§         1982 – Ct App Fed Cir came into law and adopted the law of the CCPA as binding precedent; Ct App Fed Cir was the major overhaul needed to correct patent problems.
§         Present – anti-patent climate has cooled off, but with reemergence of mergers, anti-patent sentiment might crop up again
South Corp v US 690 F.2d 1368, p16
–          every patent case on appeal goes to the Fed Circuit Appeals Court (in DC)
o        Ex: not 6th Circuit as would a Fed case in Mich
–          Circuit Court changed to Fed Circuit in 1982
Forms of IP protection.
Patent: process, machine, manufacture, Composition of matter
–          1st to invent wins!
–          20yrs from date of file
–          Published, becomes public knowledge
o        35 USC §101à seeking a utility patent           
o        35 USC §161à Plant Patent Act – you cant market it, but you can do research on it
§         this case says you can get both
–          Can get a utility patent on a hybrid
PVPA :Can get a PVPA certificate from the Department of Agriculture for the seeds for 20 years. (25 to for trees and vines). Must be sexually reproduced.
Plant Patent: Must be asexually reproduced. Term is same as utility patent
Copyright: original works of authorship fixed in a tangible medium of expression
–          2 identical works can both be copyrighted (if they’ve not been copied from each other)
–          Life of the author + 70 yrs
–          In patent law, you don’t have to copy from someone to be infringing. In copyright, you have to actually COPY.
–          Fair use privilege- allows fair use of copyrighted work, educational activities, news reporting.
–          Made for the use of the consumer (easy to identify)
–          Idea is to protect the consumer
–          Can last forever as long as you police it well
–          Infringement for trademarks are “likelihood of confusion” and the term is indefinite. The term is no longer since it is from consumer protection. If the trademark becomes too regularly confused, you can lose your trademark.
–          If the mark becomes too generic, then we are no longer going to give theme their mark.
Trade Secrets: Secrets held w/in a co.
Ex: Coke’s formula
–          Can keep it forever if you keep it secret
–          Once it is out, it’s out and you can not get a patent unless it is less than a year.
–          Made through contract of non-disclosure requirements
–          2 requirements
o        1. Information must have been subject of reasonable efforts to maintain secrecy.
o        2. Information must derive commerc

Boats, Inc. page 3
489 US 141 (1989)
P produced a fiberglass boat design, which it did not protect by filing for a patent. Florida passed a statute making it unlawful for anyone to duplicate a manufactured vessel hull using the same process Bonito was using. Bonito sued under the statue. 
§         Patent clause (Art I, sec 8, cl.8) – 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.
§         Public use bar. Pennock v Dialogue (1829)- if an inventor suffers the thing he invented to go into public use, or to be publicly sold for use, his voluntary act or acquiescence in the public sale and use is an abandonment of his right (public use bar). Once an inventor has decided to lift the veil of secrecy from his work, he must choose the protection of a federal patent or the dedication of his idea to the public at large.
§         On-sale bar. Metallizing v Kenyon (1946) – it is a condition upon the inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy or legal monopoly.
§         Obviousness. Hotchkiss v Greenwood – improvement is the work of the skillful mechanic, not that of the inventor.
§         The Florida statute interferes with patent law and is therefore preempted because:
w        It protects inventions not worthy of patent prosecution