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IP Law Survey: 

IP Law Survey

Patent Act, Venice (1474): 

Patent Act, Venice (1474) “We have among us men of great genius, apt to invent and discover ingenious devices; and in view of the grandeur and virtue of our city, more such men come to us every day from diverse parts. Now, if provision were made for the works and devices discovered by such persons, so that others who may see them could not build them and take the inventor’s honor away, more men would then apply their genius, would discover, and would build devices of great utility and benefit to our commonwealth. Therefore: Be it enacted that …” [casebook, middle of page 106 ] ”

U.S. Constitution (1787): 

U.S. Constitution (1787) Article I, Section 8, Clause 8: “The Congress shall have Power . . . 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”

The Eight “What”s: 

The Eight “What”s What: Are the underlying goals & (competing) policies? Is the source of law? (statute/C.L.; fed./state) Qualifies for protection? Must a creator/owner do to obtain & maintain protection? Rights does an owner have? What activities can an owner stop or get $ for? Watch particularly for IC (independent creation) & RE (reverse engineering) Rights do competitors/public/users have? Type of remedies are available for violations of the rights Is the duration of protection?

U.S. Patent System: 

U.S. Patent System 1790-93 : Examination system (State, War, AG) 1793-1836 : Registration system 1836-Today : Examination system (Pat Off) 1982 : Creation of U.S. Ct. App. Federal Circuit

Slide6: 

U.S. Supreme Court U.S. Court of Appeals for the Federal Circuit U.S.P.T.O. U.S. District Ct. patent prosecution infringement litigation

Types of Patents: 

Types of Patents Applications: 425,967 Grants: 173,771 Applications: 25,515 Grants: 20,965 Applications: 1,151 Grants: 1,149 2006 data

Utility Patents:Patentability Requirements: 

Utility Patents: Patentability Requirements Written description; Enablement (§ 112) Utility (usefulness) Patentable subject matter Novelty (§ 102) Statutory bars Non-obviousness / inventive step (§ 103)

Patentable Subject Matter: 

Patentable Subject Matter 35 U.S.C. § 101 “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

U.S. Patents: 

U.S. Patents Right to exclude others from making, using, offering to sell, selling, or importing patented invention in U.S. (35 U.S.C. §§ 154, 271) “A patentee shall have remedy by civil action for infringement of his patent.” (§ 281) Let’s look at a Patent: U.S. Pat. No. 5,443,036

Parts of a patent: 

Parts of a patent Patent number ‘036 patent Inventor(s) Dates Date filed 11/2/93 Date of patent 8/22/95 Prior Art (“references cited”) Title Specification Describes problem Describes solution Drawings Ends with Claims Numbered Independent / dependent Metes and bounds of the invention

“Right to Exclude”: 

“Right to Exclude” Patent confers a right to exclude others Not a right to practice the claimed invention One patent claim can “dominate” another “Blocking patents” Patentee A – “I claim X.” Patentee B – “I claim X+Y.” Can Patentee A practice (X+Y) ? Can Patentee B practice (X) ? (X+Y) ?

“Right to Exclude”: 

“Right to Exclude” Blocking patents, a simplified example: A – “I claim a knife comprising a handle and blade.” B – “I claim a knife comprising a handle and a blade wherein the blade is movably attached to the handle.” Can A practice (X+Y) without a license ? Can B practice (X) ? (X+Y) ?

The “patent bargain”: 

The “patent bargain” Public is giving up what would otherwise be a “public good” Information: free as the air to common use Competition reducing ~potential for monopolistic pricing In return, the public receives: More inventions created Profit incentive to invest in invention (the utilitarian justification) Required disclosure of invention knowledge In the patent document itself Published upon issuance App. published after 18 months (unless solely domestic filing)

Written Disclosure Requirements: 

Written Disclosure Requirements Basic Bargain You tell us about your invention, we protect you Tension … Overbroad protection (under-inclusive disclosure) shorts public knowledge Underbroad protection (over-inclusive disclosure) shorts inventor 35 U.S.C. §112, ¶ 1 – written description, enablement, best mode 35 U.S.C. §112, ¶ 2 – claim definiteness

Slide18: 

Applicant’s goal

Slide19: 

Enabled Described Claimed Prohibited

Slide20: 

Enabled Described Claimed Prohibited

O’Reilly v. Morse (U.S. 1854): 

O’Reilly v. Morse (U.S. 1854) Morse obtained telegraphy patent Claim 8 – “ … the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, letters, or signs at any distances … “ What did Morse actually invent? “must be combined with … and operate upon, certain complicated and delicate machinery” “But he has not discovered that the electro-magnetic current … in any other method … will do as well.”

Morse cont’d: 

Morse cont’d Why can’t one claim beyond the disclosure? Drag on other, future inventors “some future inventor … may discover a mode of [telegraphy] without using any part of” Morse’s work Claim 8 would give Morse the power to control it [ Justice Grier – ‘So what? It’s a blocking patent.’ ] Disconnect between claim and disclosure “he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe”

Adequate disclosure: 

Adequate disclosure Enable the full scope of what’s claimed PHOSITA* can practice the claimed invention without undue experimentation (multi-factor test) Describe the invention that’s claimed PHOSITA can reasonably conclude the inventor possessed the invention when filing the application *PHOSITA: Person Having Ordinary Skill In The Art

Utility Patents:Patentability Requirements: 

Utility Patents: Patentability Requirements Written description; Enablement (§ 112) Utility (usefulness) Patentable subject matter Novelty (§ 102) Statutory bars Non-obviousness / inventive step (§ 103)

Utility: 

Utility 35 U.S.C. § 101 “ any new and useful process, machine, manufacture … ” Why have this requirement?

Utility: 

Utility Beneficial Utility “ Is this a socially good purpose, or a bad one? ” Operability / Specific Utility “ Does it really do what the inventor says? ” perpetual motion, cold fusion, baldness cures Practical (or General) Utility “ Is a specific, substantial use disclosed here? ”

PTO Utility Guidelines: 

PTO Utility Guidelines 1995 “useful for any particular purpose (i.e., a ‘specific utility’)” 2001 “A claimed invention must have a specific and sub-stantial utility. This requirement excludes ‘throw-away’ … utilities, such as the use of a complex invention as landfill.”

Utility Patents:Patentability Requirements: 

Utility Patents: Patentability Requirements Written description; Enablement (§ 112) Utility (usefulness) Patentable subject matter Novelty (§ 102) Statutory bars Non-obviousness / inventive step (§ 103)