Patent Eligibility

Patent Law

Outline

Judge Rader

Fall 2002

Statutes

Patent Eligibility

Software

Biotech

Utility

Statutory Bars

Applicant Activities – §102(b)

Public Use

On Sale

Third Party Activities – §102(b)

Informing Uses

Secret Uses

Prior Invention

Elements of Invention Under §102(g)

Rule of Priority – §102(g)

Conception

Reduction to Practice

Diligence

Corroboration

Patent Award to the Second Inventor

Disclosure in United States Patent Applications – §102(e)

Anticipation

Identity Requirement

Enablement Requirement of Anticipation

Nonobviousness

Historical Standard

Modern Standard – The Trilogy

The Objective Tests

Case Exploration of Nonboviousness

Chemical and Biotech

Prior art for Nonobviousness

§103 Art in terms of §102

Prior Art Under §102(e) and (g)

Analogous Art

Objective Disclosure Doctrine

Enablement – How to Make

Written Description – Prosecution on New Matter

Patent Specification – Best Mode

Claims

Means Plus Function

Patent Claim Format

Preamble

Transition

Body

Product-By-Process Claims

Functional Claiming

Claim Definiteness – Particularly Pointing Out and Distinctly Claiming

Prosecution

Overview

Inventorship

Inequitable Conduct

Duty of Disclosure

Intent

Materiality

Post-Grant Procedures

Reissue

Reexamination

Infringement

Literal Infringement - Markman

Doctrine of Equivalents

Limits on Doctrine of Equivalents

“All Elements” Rule

Prior Art Limitations

Indirect Infringement

Festo Decision

Equitable Defenses

Laches and Estoppel

Shop Rights

Remedies

Injunctions

Damages

Market Share Rule

Enhanced Damages and Attorney Fees

Licensing and Misuse and Antitrust

Statutes

101 – utility (novelty, statutory bar)

102 – novelty

103 – non obviousness

§101 – whoever invents a new and useful process, machine or composition of matter may obtain a patent

§102(b)

§102(e)

§102(g)

§103

Patent Eligibility

General
What is eligible for patenting?
Process
Machine
Composition of Matter
What is NOT eligible?
Abstract
Laws of Nature
Natural Phenomenon
Pre-existing ► in the public domain
Skills – that aren’t usually exactly repeatable

Hypo – Amazonian Athletes Foot Leaf:
We find a leaf that cures athletes foot – we can’t patent the leaf itself – natural phenomenon
We can find the active ingredient – isolate and purify it.
Now we can get a patent on the purified substance, AND the process of making the compound, AND the process of using the leaf to cure athletes foot.
Once we’ve patented the chemical – we own the rights to it – even if someone else finds out htat it grows hair later.
We did the work to isolate the purified form – it never existed in that form until we made it.

Software

Is there an algorithm?
Are there sufficient transformational steps?
Is there a physical application?

Freeman-Walter-Ablee Test (FWA)

Is the formula recited in the claim directly or indirectly?
Directly – is the claim no more than the formula itself?
YES – then unpatentable
NO – Is it applied in any manner to the physical elements or a process or the steps in a process? If so – then the claim is patentable.

How to draft a software claim so it doesn’t run into the traps of Benson and run afoul of §101:

Application – relate it to some real-world application
Computer – uniqueness – faster, more accurate, more reliable, can do things beyond human capacity with head and hand
Additional Steps – physical transformation steps of the input into a different output
Claim it as a machine. Anything you can do in software can be done in hardware.

Gottschalk v Benson – Inv wants to patent the algorithm of converting deciman numbers into binary numbers, for any purpose, in any type of computer. Not Limited to any particular art or technology.

RULE – a math formula, having no substantial practical application except in connection with a digital computer, cannot be patented.
Decision:
One cannot patent an idea.
A procedure for solving a given math problem is an algorithm – the procedures set forth are a formulation for programs to solve that kind of generalized formulation.
Court of Patent Appeals tries to defy the SC in granting patents for computer code – by finding other ways to do it.
Mathematical formula has no substantial practical application except in connection with a digital computer – it’s a patent on the algorithm itself.
MUST have a concrete practical application

Diamond v Diehr– INV developed a process for curing rubber, included several steps including a computer which constantly monitored several variables. EX said that INV was trying to patent the formula and it was statutorily not allowed.

RULE – patentable claims do not become invalid because they include a mathematical formula.
Claims must be taken as a whole – INV is claiming a process for molding rubber and not the formula directly.
INV is transforming an article to a different state or thing, and that is precisely what the patent laws were designed to protect

Arrhythmia Research Technology v Corazonix – INV of a machine and process to analyze heart functions, his apparatus took signals from the heart – analyzed them backwards in time in a method that would enable the user to determine if an oncoming heart attack was imminent.

RULE – If a math algorithm recited in a patent claim only applies to the physicalelements of an apparatus or steps in a process, then the claim is patentable subject matter.
Discussion Freeman-Walter-Ablee Test
Is the process claim independent of the math formula?
1. Is the formula recited in the claim directly or indirectly?
A. Directly – is the claim no more than the formula itself?
i. YES – then unpatentable
ii. NO – if it is applied in any manner to the physical elements of a process or the steps in a process, the claim is patentable.

In RE Alappat – INV created a device which made Oscilloscope displays more clear. His invention utilized a formulae to make pixels closer to the signal stronger, and those further away from the signal weaker – the end result was a much clearer signal.

RULE – a general purpose machine programmed to perform particular specialized functions may be patentable if it creates a unique machine that produces a useful, concrete result.
Courts started to move away from the FWA test and look to the other requirements for patentability (obviousness, novelty…)
The invention is not an abstract idea, not the formula itself – not a “disembodied mathematical concept” representing nothing more than a law of nature.
It is a machine, consisting of electrical circuits that perform mathematical calculations.

State Street Bank & Trust–Business Method Patent - INV a system that allows someone to monitor and record the financial information flow and make all calculations necessary for maintaining a partner fund. The fund was based on a hub and spoke system. EX said that it was based on a math formula.

RULE – the transformation of data, through a series of math calculations into a final number, constitutes a practical application of a math algorithm, formula or calculation – because it produces a useful, concrete and tangible result.
If it’s useful – then it’s not abstract. Abstract = lacking concrete application.
State street was the first business method patent – encompassing a very broad and sweeping method of doing business. The only way it was able to get a patent, was because no one had thought that BM’s were patentable and so there was no prior art to go off.
It’s possible that SS will be found to be too broad and sweeping – that someone will come forth and say that they’ve been doing business this way for a long time and that the patent is no longer valid.

Biotech

Diamond v Chakrabarty – INV created a new living organism that could eat oil. He had three claims – the first two were methods regarding the method of making the bacterium and application to oil (these were approved). The last was on the bacteria itself – and was initially rejected.

RULE – Living organisms may be patentable.
While it may be a matter of public policy to not allow this – that’s not a matter for judicial branch and has to be decided legislatively.
Policy:
Because we allow the patenting of bio related stuff – 90% of the world’s research happens here – not in Europe.

Utility

Doctrine of Specific Utility

Patent Act of 1793 – allows for patents on “useful inventions.”

Lowell v Lewis – INV argued that his pump satisfied the useful requirement and thereby deserved patent protection

RULE – the usefulness requirement of the Patent Act is satisfied so long as the invention is not frivolous or injurious to the well-being, good policy, or sound morals of society.
COURT –D incorrectly claims that the pump must be better than those in existence in order to get protection – but “useful” doesn’t meen “better.”
If the invention is mischievous or immoral, such as a method to poison or assassinate, then it would be unpatentable.
Even if the inv serves NO PURPOSE it will still be patentable.

Brenner v Manson - INV invents a steroid but doesn’t know what it does. He says it looks an awful lot like homologue which is used to cure cancer in mice.

RULE – a process or a product which has no known use or is useful only in the sense that it may be the object of scientific research is not patentable because it is not “useful.”
NOTE – prior to 1950 the PTO assumed that all chemical compounds were necessarily useful and therefore didn’t conduct any specific inquiries.
JUDGE STORY: “a useful invention is one which may be applied to a beneficial use in society, in contradistinction to an invention injurious ot the morals, health, or good order of society, or frivolous and insignificant. And upon the assertion that to do so would encourage inventors of new processes to publicize the event for the benefit of the entire scientific community, thus widening the search for uses and increasing the fund of scientific knowledge”

In Re Brana – INV – composition of matter – an anti tumor compound – that he shows his utility by proving it works on mice. That it’s more effective than a previous compound. The previous compound is almost identical – with a “non=symmetrical substitution” than a “symmetrical substitution..” INV hadn’t tested his new compound, but was trying to get through utility by saying that his new compound was very close to another existing (and tested) compound.

RULE – applicants must show a specific use for their substances and satisfy the evidentiary requirements in order to prove utility.
To claim that a substance is for “the treatment of diseases” and “antitumor substances” are too nebulous to satisfy a patent application.
BUT, because it was similar to leukemia drug, it could be patented.
Court found that EX confused FDA requirements with patentability requirements

Statutory Bars

Critical Date (1 year prior to filing) Filing Date

◄▬▬▬▬Grace Period▬▬▬▬►

Is it a public use under §102.b?

Actor / Informing Uses / Non-Informing Uses / Trade Secrets
Applicant / Yes - pennock / Yes – Egbert / Yes – Metallizing Case -
Third Party / Yes - Battery Case – we don’t want to remove something from the public domain / Yes – Abbott – inventor doesn’t realize that they have an invention on their hands / No – Teflon Tape – we don’t want to encourage trade secrets. These people would then try and benefit from their secret and then bar you once you come along with the invention.

§102– a person is entitled to a patent unless the invention was already known or used, has been abandoned of was previously invented.

§102(b) – prohibits a patent for an invention which has been in public use more than a year prior to the application date.

General:

If you publish an article > Critical Date in US or FOR you are barred
If public use on sale > Critical Date in US – you are barred because it is then in the public domain.

Applicant Activities – §102(b)

Public Use

Egbert v Lippmann – OLD STATUTE – Corset Case – D fought a patent infringement charge by asserting that Barnes, original patentee, had permitted the corset steels he had invented to be “in public use” long before he patented them. P had given a set of his invention to a friend to test out years before he sought the patent, when her corset wore out – she ripped them out and inserted them in another corset so she could keep using them.

RULE OF LAW
RULE – if an inventor gives or sells a device to another without limitation or restriction, or injunction or secrecy, and it is used, such use is public and places the invention “in public use.”
RULE - The inventor who gives or sells a devise without limitation or restriction or injunction of secrecy, and it’s used – has been placed in public use.
RULE - Whether the use of an invention is public or private does not depend on the number of persons to whom its use is known.
RULE - Public – it is not necessary that more than one of the articles be publicly used.
RULE - Exposure to public view is not and never has been the test of a public-use bar. PU can be found even if the invention is not observable by the public. It’s often applied to technological advancements in sophisticated machinery – the insides of which are seldom seen by anyone.
Mitigation
Non Disclosure Agreement
Patent and maintain control
Experimental Use

City of Elizabeth v American Nicholson Pavement – New and improved wooden pavement was put into experimental use for 6 years before the INV went to patent it. INV paid for the section of pavement – in a public toll road where it would get lots of use, he came and visited the stretch of road almost daily and inspected it frequently.

RULE – public experimentation does not put an invention “in public use.”

Lough v Brunswick Corp – RULE – failure to maintain control over prototypes during testing will render the prototypes not experimental and thus in public use.

On Sale

UMC Electronics v US – UMC offered a prototype device to the Navy over a year before the application was filed. Their first prototype was offered to the navy, it didn’t work and they had to tweak it – which is why it took them so long – but the final product was very similar to the first – so they should have patented within 1 year of the first sale.

RULE – the issue of whether an invention is on sale is to be determined by all the circumstances surrounding the sale or offer to sell.
It doesn’t have to be reduced to practice to be considered an on sale bar.
Once it is “sufficiently tested” the inventor should know that it would work.
RULE - The issue of whether an invention is on sale is a question of law. All circumstances surrounding the sale or offer must be considered.
Including, stage of development
Nature of the invention

Pfaff v Wells – INV sold 30,000 sockets to TI for $91k. He had only schematics, hadn’t even tested one, but the schematics were solid enough to construct one.

RULE – “ready for patenting” test. If people could take the drawings and then reduce it to practice, ti was ready for patenting.
SC looked to the Telephone Cases to see what the requirements were to get a patent.
ON SALE BAR:
Is there an offer for sale
Is it ready for patenting
Proof of ready to be patented
Proof of drawings/specs ready to allow someone skilled in the art to understand.

Third Party Activities – §102(b)

Informing Uses

Electric Storage Battery v Shimadzu – ESB had unknowingly been using the INV process in their plant 5 years before P got the patent. ESB had not hidden the product or use from its employees.

RULE - A 3rd party’s innocent use of an invention in its factory to create a commercial product is a “public use” under §102(b).
Court:
Experimetnal use is not public use, but the unhidden use of a machine in a factory process to produce commercial products for profit is a public use.

Baxter International v Cobe Laboratories - INV reduced to practice and was trying to get a patent. Prior to critical date, same thing was put to use at NIH – but it was debated whether this constituted “public use.” It was in a public building, but access to the building was restricted.

RULE – for purposes of the prior use statute, a user must intentionally conceal the use of a product for such use to be deemed secret.
Mere lack of knowledge by the public is insufficient, even where such knowledge could not have been obtained by known means.
CHANGE – Patent Act of 1977 has been amended to comport with European Standards. Public Use – “everything made available to the public by means of written, oral description, by use, or in any other way before filing date.”
Under new patent act – use by Cobe would have been prior use, even if they didn’t intentionally conceal it.

Secret Uses

Gore v Garlock – INV found out that by stretching Teflon quickly it would stretch 10 times its original length. Prior art had found that it would break when stretched slowly, and no one thought to do it fast. Someone else had been using the same process to make Teflon tape – but they were keeping it as a trade secret and so no one knew how it was made. The prior art was invented in New Zealand and sold to US company with secrecy clause – although US company said they never tried to keep it secret. ► courts still found this to be secret use because they were obligated to keep it secret.

RULE – A 3rd party’s secret, commercial use of a process is not a “public use” under §102(b).
If you decide to keep a trade secret, you can’t later try and get a patent, nor can you try and block someone from trying to patent it.
Even though D claims he never tried to keep it secret – court found that one looking at the machine wouldn’t be able to discern how it worked

Prior Invention

§102(g) – disallows patents if the invention has already been made by someone else who has not abandoned, suppressed, or concealed it.

§102(e)

§102(f)

How to show you invented something first – rule for priority – §102(g)

First to reduce to practice wins
Show that it worked for its intended purpose.
Unless, someone else can show that they were First to Conceive and can show due diligence from that conception► his own reduction to practice.

Elements of Invention Under §102(g)

Rule of Priority – §102(g)

Hypo –Male Contraceptive – Aspirin and Broccol – 11/30 article saying that aspirin+broccoli might be a contraceptive. 12/1 my application is filed.

Presumption that the day you file is the date of invention. The EX will have to reject until you prove an earlier invention date.

Priority