Patent Law Outline
A. Historical Overview
B. The Structure of the Modern Patent
1. INID: International Codes of Uniform Clarity(see MPEP §901.05(b)
2. US Patent Number: referred to by last three digits(top right corner of page)
3. Issue Date: patents filed after June 8, 1995 expire 20 years after filing or 17 years after issue, whichever period is longer(see 35 USC §154(a)(2))
4. Title of Invention: simple description of the invention claimed(see 35 USC §§131/132, 37 CFR 1.72(a)/1.77(a)(3), MPEP§ §606.01/1302.04)
5. Inventor and Assignee information: normally credits inventor, but may issue to assignee(see 35 USC §§§115, 116, 152)
6. Application Information: filing number/filing date, priority filing information
7. Domestic and International Classifications: information that allows the patent to easily be found
8. Fields of Search/References: prior art examination
9. Abstract: brief summary of the technical disclosure(see 37 CFR 1.72(b))
10. Drawings: submitted to further the understanding of the subject matter(see 35 USC §113, 37 CFR 1.84, MPEP§ 608.02)
11. Specification: written description/make and use/manufacture(no new matter after description)(see 35 USC §§§ 111, 112, 132)
12. Claims: define claimant rights(can amend, but not w/new matter)(see 35 USC §112, MPEP§ 2163.01)
C. Patent Claim Drafting Exercises
1. The Basics of Claim Drafting
a. Preamble: introduces/identifies the basic nature of the invention(broad is good)
· Ex: A recyclable, insulating beverage container holder…
b. Transition: defines breadth of claims
· Open Claims: Comprising: invention comprising elements A,B, and C
o Covers embodiment of invention w/A, B, C, and any additional elements(A, B, C, D, etc…)
· Closed Claims: Consisting of: consisting of A,B, and C
o Competitor selling A, B, C, and D does not infringe on the claim(likely in field of crowded art)
· In-between Claims: Consisting essentially of: A, B, C, and D would infringe if D was not essentially different
c. The Body: bulk of claim
· List all the elements of invention
· Describe how they interact
2. Drafting a set of claims for a pencil
a. Formal Requirements for Claim Drafting
· The entire claim must be stated in a single sentence
· The claim must set forth how each element interacts with at least one other element
· Any internal reference must be clear(to avoid rejection)
b. Independent & Dependent Claims
· Independent: does not refer to any other claim
· Dependent: specifies an aspect of the independent claim(see MPEP § 608.01(n))
o Insurance technique claimed should the independent claim be later invalidated
o Multiple dependent claims may not depend on other multiple dependent claims
c. Means-plus Function Elements(see 35 USC §112 ¶6)
· Ex: means for fastening together A and B(could cover nails, screws, rivets, tape, etc…)
· Must be based in combination w/ at least one other element
d. Jepson Claims
· Drafting technique for claiming improvements
D. Overview of the Patent System
1. Patent Prosecution
· Prosecution: the application process as run through the USPTO or WIPO
· Interference: a hearing used to decide dueling priority rights(US only)
· Final Rejection(see 35 USC §132): rejection occurring after time limit expiration or improper amending)
o Application options at final rejection:
§ Appeal to the Board(see 35 USC §134)
§ Continuation(requires fee): several forms:
· Continuation: amendments to claims that does not introduce new matter(maintains filing date)(see 35 USC §120)
· Continuation-in-part: change of disclosure(new matter negates original filing date)
· Request for continued examination(additional fee)
· Divisional Application: non-elected claims filed separately to relieve a restriction
· Appeal to federal court or civil a
achine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent, therefore, subject to conditions and requirements of this title.
o How do we decide what is frivolous/injurious?
· Juicy Whip, Inc. v. Orange Bang: Patent for post-mix dispenser that made the apparatus look like a pre-mix model.
o An invention is useful if capable of providing some identifiable benefit.
o What role does morality play in Patent Law?
D. Practical or Specific Utility
· Brenner v. Manson: Inventor attempted to show that he was the first to invent but was unable to show that he had found a use for the steroid before other inventors.
o One may patent only that which is useful.
o Interference: two parties claim to have invented the same thing
o Timing: Manson’s utility claim would have been valid had it been for 1960.
o Patents may be obtained for new uses of existing patents; however, a license from the original patentee is needed.
o There must be a substantial and specific use when applying for a patent.
o Patents given without a known use could block research that may later find a use. (discouraged)
· In re Brana: Antitumor agent introduced and thought to be obvious to previously patented compound unless a specific disease that the compound was effective against could be shown.
o §112 enabling requirement: The specification shall contain a written description of the invention…in such…exact terms as to enable any person skilled in the art…to make and use the same.