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Class Flashcards

1
Q

What are the three classes of ineligible patent subject matter §101?

A
  1. Laws of Nature
  2. Natural Phenomena
  3. Abstract Ideas
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2
Q

What is the “Patent Eligibility” test in Alice?

A
  1. Do the claims together point to an excluded subject matter?
  2. Do the claims either individually or together contain an inventive concept that transforms the ineligible subject matter into patentable subject matter?
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3
Q

What is the general rule for Alice step #1?

A

Are the claims directed to an abstract idea?

Alice

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4
Q

What are the three types of Patents?

A
  1. Utility
  2. Design
  3. Plant (Asexual Reproduction)
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5
Q

What are the types of Utility Patents?

A
  1. Process
  2. Machine
  3. Manufacture
  4. Composition of Matter

35 U.S.C. 100(b)

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6
Q

What is the Constitutional basis for Patents?

A

Congress shall have the power to:

Promote the progress of …..useful arts, by securing for limited times to ….. inventors the exclusive right to their respective …… discoveries.

Art. I, Sec. 8

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7
Q

What is anticipation?

A

A single prior art reference that discloses each and every element of the claimed invention. The disclosure must be enable a person of ordinary skill in the art to make the invention without undue experimentation.

  • Each element may be explicitly or inherently disclosed.

U.S.C. 102

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8
Q

What are genus/species claims?

A

A genus claim is one that broadly encompasses a large group of possible inventions.

A species claim is one that narrowly claims a subset of the genus.

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9
Q

What is genus/species anticipation?

A

A genus (broad) does not necessarily anticipate a species (narrowing).

A species always anticipates a genus (Titanium).

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10
Q

What is anticipation by inherency?

A

The practice of the prior reference would inevitably have resulted in the claimes invention, or the claimed property is inherent in the prior art reference.

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11
Q

Can anticipation by inherency be overcome?

A

A showing of extrinsic evidence which raises an legitimate question of inherency can overcome anticipation.

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12
Q

What is a printed publication?

A

A document or drawing that is sufficiently accessible to the public.

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13
Q

What constitutes sufficiently accessible?

A
  • Length of time that info was accessible
  • Where and to whom the info was displayed
  • Content cataloged and indexed
  • Diligent researcher could find the (subject matter) content
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14
Q

What is pre-AIA 102(a)?

A

Prior Art

  • Known or used by others in the US
  • Patented
  • Printed Publication

before the invention date of the patent

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15
Q

What is pre-AIA 102(b)?

A

Prior Art

  • Patented
  • Printed Publication
  • Public use or on sale in the US

more than 1 year prior to the filing date

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16
Q

What is pre-AIA 102(c)?

A

Abandonment

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17
Q

What is pre-AIA 102(d)?

A

Patented in a foreign country more than 12 months prior to the US filing.

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18
Q

What is pre-AIA 102(e)

A

Prior Art

  1. An application published before the invention date
  2. An application filed before the invention date that issues
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19
Q

What is pre-AIA 102(f)?

A

Derived from another.

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20
Q

what is pre-AIA 102(g)

A

Interference

  1. the earlier invention that was not abandoned, supressed or concealed

Diligence

  1. the first to invent but second to reduce to practice must show diligence
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21
Q

What is diligence?

A

The inventor continously pursued the reduction to practice, albeit slowly, without unexplained or unexcused gaps.

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22
Q

What is the 102(b) critical date?

A

One year or more before the application filing date.

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23
Q

What is an informing public use?

A

A public use which would allow the public to understand the nature of the invention.

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24
Q

What is a non-informing public use?

A

A public use in which the invention is not discernable to the public, like a subpart of a machine.

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25
Q

What are the two requirements (Pfaff Factors) for “on sale” pre-AIA 102(b)?

A
  1. the invention must be the subject of a commercial offer to sell, and
  2. the invention must be ready for patenting
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26
Q

What does “ready for patenting” mean?

A
  1. reduced to practice before the critical date, or
  2. the invention has at least been reduced to drawings or other descriptions enabling a POSITA to practice the invention.
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27
Q

What are the Pfaff factors?

A
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28
Q

What is the experimental use exception?

A

If the inventor is still by way of experimentation perfecting the invention, the public use bar is negated.

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29
Q

What is constructive reduction to practice?

A

Filing a patent application

30
Q

What is actual reduction to practice?

A

Creation of a physical embodiment of the invention.

31
Q

What is AIA 102(a)(1) prior art?

A

(1)

  • Patented
  • Printed publication
  • Public use
  • On sale
  • Available to the public

before the effective filing date

32
Q

What is AIA 102(a)(2) prior art?

A

(2)

  • Issued Patent
  • Published application

by another before the earliest filing date.

33
Q

What is the AIA-102(b)(1) exception to prior art (Disclosures)?

A
  1. Inventors disclosure within 1 year of effective filing date
  2. Disclosures derived from inventors within 1 year of effective filing date
  3. Any disclosure within 1 year of the effective filing date if the inventor has previously disclosed.
34
Q

What is the disclosure quid pro quo?

A

In exchange for a monopoly granted by the government, the inventor must disclose the invention with sufficient clarity and detail to enable the public to understand the invention.

35
Q

What is a secret public use?

A

The commercial but secret use of the invention counts as a public use.

36
Q

What constitutes “on-sale”?

A

The court relies on UCC principles of commercial terms like quanitity and pricing. The presentation of an offer to sell that could be accepted by the buyer.

37
Q

What is the AIA 102(b)(2) exception to prior art (Applications and Patents)?

A

Prior Art except:

  • Obtained from the inventor or joint inventor
  • Public disclosure by the inventor prior to publication of application or issued patent
  • Subject matter disclosed not later than filing date owned by the same owner/asignee
38
Q

What is a trademark?

A
  • Word, symbol, name or device that,
  • identifies and distinguishes goods and
  • indicates the source (orginator) of the goods
39
Q

What is a copyright?

A
  • An orginal work of authorship
  • in a fixed tangible medium
  • of expression
40
Q

What is a trade secret?

A

Information used in business that has commercial value and kept secret by reasonable means

41
Q

In what ways can trade secrets by misappropriated?

A
  • Theft or illegal acts
  • Breach of confidentiality
  • Other improper means
42
Q

What are the four policy basis for Patent Law?

A
  • Natural Law
  • Reward by Monopoly
  • Monopoly profit incentive
  • Exchange for Secrets
43
Q

What is the Reward by Monopoly rationale?

A
  • Inventors work
  • Reward for labor of inventor (monopoly)
  • Reward related to social utility
  • Inventor focus not society focus
44
Q

What is the Natural Law rationale?

A
  • Locke, Hagel theory of property rights
  • Property rights in intellectual labor
  • Successful in EU, not US
  • Focus on Inventor, not society
45
Q

What is monopoly profit rationale?

A
  • Encourage R&D efforts and innovation
  • Without monopoly, R&D investment falls
  • Monopoly rewards beyond what a competitive market would.
46
Q

What is the Exchange for Secrets rationale?

A
  • Without incentive inventors would keep inventions secret
  • public does not benefit fully from secret inventions
  • Quid pro quo - exchange of disclosure for monopoly
47
Q

What is the Patent Office route to the CAFC

A
  • Normal patent prosecution
  • Appeal to PTAB
  • Appeal to CAFC
    • rules on information from PTAB proceeding
48
Q

What is the District Court route to CAFC?

A
  • USPTO prosecution
  • Appeal to PTAB
  • File with Eastern Virginia District Court
    • Add matter beyond PTAB proceeding
  • Appeal to CAFC
    • Rule on District Court proceeding
49
Q

How does one file an infringment action?

A
  • File in Disctrict Court (Federal Cause of Action)
    • Civ Pro rules apply
  • Appeal to CAFC
  • Appeal to Supremes
50
Q

What sections are normally in a Specification

A
  • Written Description
    • Field
    • Background
    • Summary
    • Description of drawings
    • Detailed Description
  • Claims
51
Q

What is the Mayo test for subject matter eligibility?

A
  • Patent directed at patent-ineligible concept?
  • Is there an inventive concept in addition to the ineligible concept?
    • Something significantly more that the concept itself - Alice
    • Not just pre- and post-solution activity
52
Q

What is the “machine or transformation” test for processes?

A

Section 101 process patentibility

  • Process tied to a particular machine or apparatus
  • Process transforms particular article into a different state or thing
53
Q

What is section 101 for patentable inventions?

A

Whoever invents a new an useful

  • process
  • machine
  • manufacture
  • or composition of matter
  • or any new and useful improvement thereof
54
Q

What is the prior use rule?

A

Reducing to practice and using a method 1 year prior to the filing date of another will preclude a finding of infringement.

55
Q

Are business methods patentable?

A
  • Possible yes
    • Machine or transformation test not the sole test but,
    • may be useful and important clue
  • No if the business method is abstract
56
Q

What is the utility requirement?

A
  • The usefullness of the invention must be
    • Substantial
    • Specific

Fisher

57
Q

How does one get a civil action to obtain a patent?

A
  • After PTAB rejection,
  • File a civil action against the Director,
    • in Eastern District of Virginia
    • within 60 days
  • If the District Court finds for the applicant, then the Director must grant a patent

35 U.S.C. § 145

58
Q

What factors are relevant to public use?

A
  • Level of secrecy
  • Number of observers
  • Intent of the inventor
  • Number of uses of the invention
  • Extent to which observers understand the disclosed invention
59
Q

What is swearing back?

A

The submission of an affadavit by the inventor establishing an earlier reduction to practice, invention date, or diligence than a cited reference. Does not work on statutory bars.

37 U.S.C. 1.131(a)

60
Q

What is an interference?

A

In Pre-AIA land, when two patent applications claimed the same subject matter, the office would determine which application would be granted based on certain priority rules 101(g).

61
Q

What is an Inter-parties proceeding?

A

One which involves both parties in the proceedings.

62
Q

What is a “count” in an interference?

A

A count defines the common subject matter claimed.

63
Q

Who is responsible for proving that they are entitled to a patent in an interference proceeding?

A

A junior party (second to file) must show that they have an earlier;

  • Conception, or
  • Reduction to Practice, or
  • Diligence, and
  • Without any Abandonment, Suppression, or Concealment

than the senior party (first to file).

102(g)

64
Q

What is required to establish conception?

A
  • Directing conception
    • That the desired result can be achieved by following a particular plan
      • What you want to do
  • Selection of the means
    • A way of effectively achieving the results of the directing conception
      • How you plan to do it (actually do it)
65
Q

How does on establish reduction to practice?

A
  • Invention must be suitable for its intended purpose
    • Working prototype?
    • Detailed drawings?
  • Testing may be required
    • Examples of working as intended in contemplated use
      • Complex invention - more stringent testing req’d
      • Simple invention - less stringent testing req’d
    • Fact specific
  • Does NOT have to commercially viable.
66
Q

What is obviousness?

A

The combination of multiple prior art references which if considered by a Person of Ordinary Skill in the Art would have been motivated to combine the references into the invention being patented.

67
Q

Who is a Person of Ordinary Skill in the Art?

A

Depends, sliding scale

  • For inventions that are more common in understanding, an ordinary person may suffice
  • For inventions that are more complex or technology specific, a Ph.D. might be required.
  • Case by Case determination of the court
68
Q

What is the Teaching, Suggestion, Motivation (TSM) test?

A

A test which attempts to remove hindsite bias of fact finders when considering obviousness issues. The test considers why the Person of Ordinary Skill in the Art would want to combine the references.

  • Do the references teach combination?
  • Do the references suggest combination?
  • Is there some problem to be solved that motivates combination?
69
Q

What are the Graham Factors for Obviousness?

A
  • Scope and content of prior art
  • Differences between the prior art and claimed invention
  • Level of ordinary skill in the art
  • Secondary considerations

Graham

70
Q

What is the effect of KSR?

A

TSM test is not the sole indicator of obviousness.

  • Need to surface the motivation of the POSITA to put them all together
    • Combining prior art elements
    • Substituting one element for another
    • Obvious to try the combination
  • Must consider all of the evidence in rebuttal
71
Q

What are secondary considerations in Graham?

A
  • Commercial success
  • Industry praise
  • Unexpected results
  • Copying
  • inductry skepticism
  • Licensing
  • Long-felt but unsolved need
  • Prior failures
  • Independent development
72
Q

What makes prior art analogous?

A
  • Same field of endeavor
  • Reference pertinent to the particular problem
    • Inventor would have run into it when reviewing the problem

Patent (2 decks)

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