Gives You the Right to Exclude Others from Making Or Selling a Certain Product

PATENTS

Prof. Rahaal

Spring 2001

What is a Patent?

• Gives you the right to exclude others from making or selling a certain product

• Strictly Federal

Includes:

• Drawings (not req. for method patents)

• Abstract (just gives enough info to tell what the invention is)

• Claims

- One Sentence, no periods

- Defines Invention

- Novel, and non-obvious

Types of claims

• Independent

- Broadest, Stands Alone

• Dependent

- Refers back to independent claim

Limits:

• Prior Art

• Must be patentable subject matter

3 Parts to Claims:

1. Preamble

• identifies the field

• try to use broad terms

• don’t use words you don’t need

2. Transition Phrase

• between preamble and body (ex: comprising)

3. Body

• defines your invention

• list elements and essential components, and how they fit together

Trade Dress

• Shape or Look of something

• if there is a likelihood of confusion, then rights to sue

• If a functional part of something, then trade dress shouldn’t come into play

Shape - Shapes of valves, pumps

Prosecution of A Patent Application

Examiner does his search, goes to a technical class, does another search, should respond in 14 months

If no response in 14 months, then day for a day allowances to applicant

Then 1st office action-- allow, reject

• 3 months to respond

• Can pay for an extension of 3 more months

Responses

• Argue about why they rejected §112, prior art

Then 2nd Office Action

• Can reject/allow all claims, some claims

If rejected, somewhat limited:

1) Quit

2) Appeal to a board

3) File a continuation

If you lose here,

1) May file Civil Action in District Court in DC

2) File to Court of Appeals for Fed. Circuit

Interference - Litigation within the patent office that determines who’s entitled to the invention

35 USC § 101

1st door when talking of patentability

• Must be Useful, UTILITY

• Must be New, NOVELTY

- Determined by Statute (§101-§103)

- Examine Prior Art

4 Categories:

1) Process

2) Machine (moving parts)

3) Manufacture

4) Composition of Matter

Gottschalk v. Benson

* 1st S. Ct ruling on patentability of software

• Claimed a method for encoding binary encoded decimals into pure binary numbers

• ALGORITHM- a procedure for solving a given type of mathematical problem

• Held: 1. May already be known, 2. To broad

Maybe should have

1. Tied it to something specific

2. Transform from one state to another

3. Tied it to something physical

Diamond v. Diehr - Rubber curing process

• Rejected because: Drawn to nonstatutory subject matter under §101 in that those steps in the registrant’s claims were carried out by a computer

State Street v. Signature Financial

• Invention: Program Management System

• Ct. finds it a machine - “Means Plus Function” language

Mathematical Algorithm Exception

• Transformation of Data (nothing physical)

• “Creates a useful, tangible, and concrete result

- Begs question - What now is not tangible?

• Before State Street, hesitation on granting patents without physical transformation.

AT&T v. Excel

• Broadens State Street to apply not only to machines

• Method for determining who long distance carrier is

• Data gathering was only physical step.

• If court says it’s tangible, it is

§102 BaSic Requirements:

Novelty, Timely Matter (b,c,d)

for (a) Critical Date = invention date

for (b) Critical Date = 1 year prior to application date

“On Sale” Phaff (supp.) - Sets forth on sale requirements

• Subj. of commercial offer for sale

• Ready for patenting

• Proof of RTP

• Drawings & Descriptions that would allow one skilled in the art...

35 USC §102(a)

Anticipation -

- Things that occur prior to invention, and if they do, prohibit patentability for lack of novelty.

- No grace period (unlike statutory bar)

• Must be realized -- must be so intentional or noticed that it can be repeated.

Events that defeat novelty anytime before invention:

Domestic

• Prior Patent by anyone

• Printed publication

• Knowledge or unabandoned

• Unsuppressed

• Unconcealed invention by others

• Use by others

• Description in another’s previously filed and eventually granted application

Foreign (Documentary Anticipation):

• Prior patent by anyone or printed publication, invention must be described

• Whether document was published to an extent that it added to the prior art

• Was information potentially available to those knowledgeable in the particular art?

Principle of Substantial Identity

• All events must be so substantially the same as the invention as to accomplish the disclosure purpose of the patent law.

- may not need anything more than a picture to support anticipation

TEST:

• Must have a single piece of prior art, and must anticipate the entire patent.

• Rejection for anticipation under §102(a) requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.

- BOP for invalidity is Clear and Convincing Evidence

• Must add something new to society, art

• See chart, p.338

• Most other industrialized countries do not have the one year grace period.

Important Dates

• Critical Date -

- Earliest Date which you can claim benefit under the statute

- §102(a) - Date of Invention

- §102(b) - One year prior to application

• Effective Date -

- refers to prior art

Conception -

• Mental Part of Invention

• “formation in the mind of the mind of the inventor, of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”

• Complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without excessive research or experimentation

• Courts require corroborating evidence o a contemporaneous disclosure that would enable one skilled in the art to make the invention

• Conception plus “reasonable diligence” to reduction to practice might let you win a patent contest if you were first to conceive, but second to reduce to practice

Reduction to Practice - Created a physical embodiment

• Inventor must demonstrate that the invention is suitable for its intended purpose

• May require test results

• Testing must be sufficiently similar to its intended purpose to show RTP

- Requires some corroboration, can’t solely rely on inventor’s testimony

• Documentation of Tests

• Affidavits

Constructive Reduction to Practice - filing of the patent application, regardless of whether anything is built

“Strict Identity”

• Single Prior Art reference must disclose every element of that invention, arranged as in the claim

• If one element is missing, go to different standard - -- Possible § 103 (obviousness)

Anticipation -

- may not need anything more than a picture to support anticipation

- BOP for invalidity is Clear and Convincing Evidence

• Must have a single piece of prior art, and must anticipate the entire patent.

• Rejection for anticipation under §102(a) requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.

• Prior art must be “enabling” - enough info to allow one skilled in the art to make and use it

35 USC §102(b) - Application Priority

WHO?

• Not limited, can be inventor or 3rd Party

• Aimed more towards inventors

WHAT?

• Patented/Described in a publication

• Offered for Sale

WHY?

• Intended to motivate the inventor to apply for a patent soon after the invention, but in no case longer than 12 months after any of the enumerated events

• Rewards diligence

WHEN?

• More than one year before filing date of application

Policies on Public Use and On Sale Bars:

1. Discouraging removal of inventions from public domain

2. Favoring Prompt and Widespread Disclosure of Inventions

3. Allowing the inventor a reasonable amount of time following public use or sales activity to determine the potential economic value of a patent

4. Prohibiting the inventor from commercially exploiting the patent for a period greater than the statutorily prescribed time of one year.

Third Party Secret Use

• Truly secret commercial use by a 3rd party will not invalidate your patent, not public use

• But, Secret commercial use by inventor will invalidate

In Re Cronyn

• 3 undergrad thesis's not considered a “printed publication” for 102(b) purposes.

• Publications not indexed in a way that made them discoverable, must be

“sufficiently accessible”

• Even though not in the statute, public accessibility is what the cases focus on, not so much on form of publication.

•• If Patented in a foreign country, it falls both under 102(a) and 102(b). ••

These Events Raise Statutory Bar (if they occur MORE than 12 months prior to filing):

Domestic:

• Prior patent by anyone

• Printed publication

• Public use by the inventor (can foreclose as long as use discloses the invention’s benefits, not necessary to disclose secrets)

• But, if use is limited or restricted so as intentionally to prevent disclosure, as in a test, such limited or restricted use will not trigger the statutory bar

• Limited number of people who have signed confidential agreements

• Sale

• Experimental use can be an exception here too

Foreign:

• Prior patent by anyone

• Printed publication

• Prior patent application by the applicant

• Only if a patent is granted PRIOR to Domestic Application

Experimentation Exception

• Designed to give the inventor a little more time in which to perfect his invention

• Allows the inventor to engage in a limited public use that does not trigger the bar.

• Balancing process is employed to determine whether the purpose of the use is truly ` experimentation or whether instead public use

• Degree of public use balanced against actual testing.

• Need some degree of secrecy

Alexander Milburn Co. v. Davis-Bournonville

• secret prior art § 102(g), don’t know about it until you have filed

• Court bounces between novelty/prior invention and publications as stat. bar

Under either scenario, the application filed by another before invention shall have the effect of a national application

If abandoned, or never published, not prior art

Oak Industries v. Zenith

• §102(g) secret prioir art

• Zenith must show anticipation (prioir invention) by C&C.

ABANDONMENT §102(c)

• Original inventor has voluntarily chosen not to patent the invention. Must have occurred prior to the invention date of the other party.

• Continued development of a device is evidence not to abandon.

§102(g) says you must prove prior invention with no abandonment, suppression, or concealment.

DILIGENCE

• Only comes into play when a party is first to conceive, but second to RTP

• Must show continuous and reasonable diligence from a date just prior to the other party’s conception to its RTP

• Fairly strict standard

Abandonment, Suppression, Concealment

3 Factors Especially Pertanent

1. Length of Delay-Period from RTP to either an application or commercialization

2. The existence and nature of any activity during the delay period.

3. The cause of the resumption of the activity (“spurring” the first inventor into action)

§102 (e)

• Patent Applications can constitute secret prior art

Must haves:

1. Application Filed

and either

a) Issued

b) Publish

• A patent-defeating provision

• Patent office cannot use a foreign filing date to establish a prior art date

• Look at actual US filing date, so if disclosed to you, can’t be used as a patent defeating prior art

• As an applicant, you establish your earliest priority date either here on in a foreign country.

• Can only use foreign patent as a shield, rather than a sword

§119 Gives affirmative rights

102 (f)- DERIVATION (he did not actually invent the subject matter sought to be patented)

• To Show Derivation:

Party asserting invalidity must prove both:

• Prior Conception of the Invention by Another

• Communication to the Patentee

Need complete conception, and must communicate complete conception (enough to allow one practiced in the art to reconstruct)

• Now, incomplete confidential communications and be combined with other prior art if other prior art would have suggested to one knowledgable in the field to invent

In an interference, you may use foreign filing date or conception in a foreign country to establish your own date of invention, but must claim prioirity in your US application that is filed within one year.

§104 has been modified to establish conception by notes and work = “inventive acts”. This is limited to NAFTA and WTO countries.

DSL Dynamic v. Union Switch

Test for reduction to practice through testing:

• The use of the invention and tests was an intended purpose of the invention

or

• If the tests were not conducted with the intended use of the invention, the test did sufficiently simulate the conditions present to show reduction to practice

§102 (g)-

Typically comes up in an interference, but can be used to invalidate

In Re Bass

• 102(g) prior art is prior art for §103 purposes, just as it is for 102(g) anticipation purposes.

“Swearing Behind” Rule 131

-can be used in a, e, g.

- Not useful in a 102(b) rejection

- Only helpful when you have prior art that discloses, but doesn’t claim

§103 - NONOBVIOUSNESS

• Limitations can be found in more than one piece of prior art

- If enough commincated that you could take that and add with other prior art then 103 invalidity

In Re Dow Chemical

The criteria for determination of obviousness is whether the prior art would have suggested to one of ordinary skill in the art that this process should be carried out & would have a reasonable likelihood of success, viewed in light of the prior art.

Two Part Test:

1. Whether prior art would have suggested to one skilled in the art that they should make the claimed composition or device or carry out the claimed process.

2. Whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success.

Where can suggestions to invent come from?