Patent Flashcards
5 Requirements for patentability
- novelty
- Utility
- nonobviousness
- adequate disclosure
- proper subject matter
What protections does a patent bring?
Making, using, selling, offering to sell, importing for 20 years
How long does patent protection last?
20 years
Are parent protections international?
No, only in the US
What is the trade off behind parent law?
Inventor tells exactly how to make and use invention
Gets protection for 20 years
Can a patent be obtained postpartum/by an entity?
No, must be from a living breathing person
When dies the term of patent protection start?
When the application is filled
What are the specification requirements for a patent?
Shows the inventor knows how to make and use invention
Allows someone else in the art to read and replicate
What is the claim of a patent, theoretically?
The “meets and bounds” in real property. The claim defines the property right that is being protected
Which parts of a patent give legal protection?
Only the claim
What is the patent application process
- File with the PTO
- Assigned to a PTO examiner
- PTO examiner issues acceptance or initial rejection
- Can work with the examiner
- PTO examiners issues acceptance or final rejection
What is the effect of a continuation application
Pick up the application exactly where the parties left off
What is the appeal chain for Patents
- PTO
- Appeal Patent Trial and Appeal Board (PTAB)
- Appeal to Federal Circuit
What is the Federal Circuit and why was it created
The court that takes all patent appeals
Created because patent protection is across the country, and Congress did not want circuit splits on patent law, would create inconsistent results
What is the critical date under the AIA
The date of the first inventor to file
What is the 2 part test for novelty
- does prior art fall into a category of §102
- Does the prior art anticipate
Categories under §102
Documented
* Patent
* Printed publication
Non Documented
* Public use
* On sale
* Otherwise available
Public Use under §102
- Disclosed to even a single person is public use –> inventor has given up control
- Visibility not an issue for public use (think corset case)
- Inventor maintaining full control at all times - not public use (think Rubik’s cube)
- Experimental use - not public use
Experimental use for public use under §102
- Think the wooden pavement case
- Inventor was on site everyday, testing the invention and asking people what they thought, making improvements
This was the only way for the invention to be tested
Does commercialization mean public use for a patent?
Yes
Is giving up control to one person public use for a patent?
Yes
If the inventor maintains full control, but the invention is accessible to some members of the public, is that public use?
No - but examine the level of control maintained by the inventor
On sale under §102
- Subject of commercial offer for sale
- Ready for Patenting
- Reduced to practice physically or conceptually
Otherwise Available under §102
Catchall category where the invention is known but does not fit into categories
Printed Publication under §102
Think German Case
* Does the public have access anywhere in the world
* Is it accessible (indexed)
Patent Application under §102
- Does not count as prior art untio it is pushed
- When that happens, date is retroactive to date of filing
Grace Period under §102(b)(1)
- Inventor discloses and files application within a year
- These disclosures will not count as prior art:
- made by inventor
- Made by someone else after inventor publicly discloses subject matter
- but if someone else files within a year, the initial disclosure will be considered prior art
3 Questions for Grace Period under §102
- What is the effective filing date?
- Prior to filing date, did inventor disclose?
- Prior to filing date, did anyone else disclose?
What is anticipation?
Prior art has each aspect of claim
Steps for determinign anticipation between prior art and patent
- Break claim down into elements
- Compare every piece of prior art left after 102
- Line up elements of claim and prior art
- If you get a single “no” does not anticipate
Nonobviousness §103
“would have been obvious before the effective filing date…to a person having ordinary skill in the art”
What does PHOSITA mean?
Person Having Ordinary Skill In The Art
Steps for Nonobviousness
- Determine the scope and content of prior art
- Ascertain differences between prior art and claim
- Resolve level PHOSITA
- Evaluate the obviousness of invention to the PHOSITA
- Refine analysis in light of secondary considerations
What are the secondary considerations when testing for nonobviousness?
- Commercial success
- Long felt but unresolved needs
- Failure of others
Is obviousness a low standard for an improvement?
No, it is a pretty high standard. The problem and solution must be pretty narrow for an improvement to be deemed obvious.
TSM Method
Method for evaluating nonobviousness
Did prior art:
* teach
* suggest
* motivate claim
What did SCOTUS say when they ruled on the TSM test?
They did not overrule the TSM test, but they said it was not dispositive. Instead, it was a good place to start an analysis
What is the general question for nonobviousness?
Would PHOSITA facing needs in field have seen a benefit to combining prior art?
What are the 3 Utility components?
- Credible utility
- must do what inventor says it does
- Beneficial utility
- produces some benefit for society
- Practical utility
- be useful for a specific purpose, not just a paperweight
Company creates a steriod that could be useful in cancer treatment, does not yet have specific use for the steriod, wants to patent. What result?
No patent, must have a specific use, not giving a patent for the inventor to go hunting for a use, not granting a “hunting license”
Disclosure requirement
- Specification
- Claim
- Best method
Company used a process to claim 26 genomes, want to patent, the claim includes any genome created with this process. What result?
Enablement
No patent, potentially countless genomes creatable with the process, a patent would do nothing more than create a hunting expedition. There would be too much trial and exercise - Undue Experimentation
What are the factors to consider for undue experimentation?
- Quantity
- Direction/guidance given
- Presence of working examples
- Nature of invention
- State of prior art
- Skill of PHOSITA
- Predictability of art
- Breadth of claims
Is the best mode a high standard?
No, a very very low standard. Does not have to be in the claim, can be buried somewhere in the specification. Cannot argue to invalidate on the grounds of lacking a best method
What is the definition of patentability subject matter?
“process, machine, manufacture, composition of matter, or improvement thereof”
Can you patent laws of nature?
No
Can you patent physical phenomena?
No
Can you patent abstract ideas?
No
Does use of an unpatentalbe element make an invention unpatentable?
No, but the unpatentable element must be build upon enough
Maching or Transformation Test
Used when the eye test for patentability doesn’t really work
Does invention involve a machine or transformation of ingredients - use of machine must be intregral
2 Part Mayo framework for determining patentable subject matter
- Determine whether the core of the claim at issue is directed to a patent ineligible concept
- What else is in the claim
- consider claims both individually and in combination
- Search for an “inventive concept” as the touchstone of patentability
Are business methods patentable?
Yes, but that is not so solid right now
Direct infringement definition
Each element of the claim is found in an accused prodoct or process
How do you set up evaluating direct infringement?
- Break down the claim elements and the accused product.
- If all the elements line up, there is direct infringement
What intrinsic evidence can be used to deterine direct infringement?
- claim language
- specification - this is the single best guide for what the inventor meant
- Prosecution history
What extrinsic evidence can be used to determine direct infringement?
- general purpose dictionary
- technical dictionary
- expert testimony
- other publications
What is the doctrine of equivalence?
If the patent performs substantially the same function, in substantially the same way, to achieve substantially the same result
even when using Doctrine of Equivalence, must still analyze element by element
Do you compare the accused devise to the patent claim or the commercial product?
The patent claim. That is the part of the patent that gives legal protections
Is direct infringement strict liability?
Yes
Induced infringement definition
“whoever actively induces infringement of a patent shall be liable as infringer”
Must direct infringement be determined before induced infringement?
Yes
Is there an intent requirement for induced infringment?
Yes
What must be proven for induced infringement?
- the patent exists
- induced acts will lead to infringement
knowledge can be proved thorugh willful blindness
good faith belief in invalidity not a defense
Contributory infringement
Assisting infringement in a material way
**often in the form of selling a component/material piece
What are the elements for contributory infringement?
- Scale of component or apparatus
- Part constituted a material part of invention
- Supplier knew part specially made
- Part not suitable for substantial noninfringing use
- Used for direct infringement
What are the defenses in patent cases?
- noninfringement
- invalidity
- defenses on patentee’s commercial relationships
- Defenses on experimental use
- Defenses on patentee’s conduct
Is there a high burden on proving invalidity?
Yes, there is a very high burden
Must be proven with clear and convincing evidence, any patent is presumed to be valid
Defense on patentee’s commercial relationships
Patentee starts selling and licensing patented product in a way that extinguishes patent rights such as exhaustion
Exhaustion/First Sale in Patent
Once a patented product is sold, the patentee has received the benefit of the patent protection, the consumer is free to do with the product what they wish
Examples of Exhausion in patent
- after selling a printer, cannot require the consumer to return to you and only you to refill ink
- Cannot sell soybeans to farmers and force them to sell all soybean fruits and buy more soybeans from you next year
- Method patent - exhausted by sale of the item created by the method
What is the result of exhausion for a patent
The patent is rendered unenforceable in that situation
does not invalidate a patent
Experimental use for patent defense
- very narrow
- Also renders patent unenforceable, not invalid
- Mainly used with drug developers, using the defense to create genetic drugs to sell right away when the patent expires
Defenses based on the patentee’s conduct
Usually while applying for the patent, usually when lying to the PTO
What is the effect of a defense on patentee’s conduct
If successful, the patent disappears
