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IP > Patent > Flashcards

Patent Flashcards

1
Q

5 Requirements for patentability

A
  1. novelty
  2. Utility
  3. nonobviousness
  4. adequate disclosure
  5. proper subject matter
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2
Q

What protections does a patent bring?

A

Making, using, selling, offering to sell, importing for 20 years

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3
Q

How long does patent protection last?

A

20 years

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4
Q

Are parent protections international?

A

No, only in the US

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5
Q

What is the trade off behind parent law?

A

Inventor tells exactly how to make and use invention
Gets protection for 20 years

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6
Q

Can a patent be obtained postpartum/by an entity?

A

No, must be from a living breathing person

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7
Q

When dies the term of patent protection start?

A

When the application is filled

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8
Q

What are the specification requirements for a patent?

A

Shows the inventor knows how to make and use invention
Allows someone else in the art to read and replicate

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9
Q

What is the claim of a patent, theoretically?

A

The “meets and bounds” in real property. The claim defines the property right that is being protected

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10
Q

Which parts of a patent give legal protection?

A

Only the claim

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11
Q

What is the patent application process

A
  1. File with the PTO
  2. Assigned to a PTO examiner
  3. PTO examiner issues acceptance or initial rejection
  4. Can work with the examiner
  5. PTO examiners issues acceptance or final rejection
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12
Q

What is the effect of a continuation application

A

Pick up the application exactly where the parties left off

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13
Q

What is the appeal chain for Patents

A
  1. PTO
  2. Appeal Patent Trial and Appeal Board (PTAB)
  3. Appeal to Federal Circuit
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14
Q

What is the Federal Circuit and why was it created

A

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

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15
Q

What is the critical date under the AIA

A

The date of the first inventor to file

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16
Q

What is the 2 part test for novelty

A
  • does prior art fall into a category of §102
  • Does the prior art anticipate
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17
Q

Categories under §102

A

Documented
* Patent
* Printed publication

Non Documented
* Public use
* On sale
* Otherwise available

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18
Q

Public Use under §102

A
  • 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
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19
Q

Experimental use for public use under §102

A
  • 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
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20
Q

Does commercialization mean public use for a patent?

A

Yes

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21
Q

Is giving up control to one person public use for a patent?

A

Yes

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22
Q

If the inventor maintains full control, but the invention is accessible to some members of the public, is that public use?

A

No - but examine the level of control maintained by the inventor

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23
Q

On sale under §102

A
  1. Subject of commercial offer for sale
  2. Ready for Patenting
    • Reduced to practice physically or conceptually
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24
Q

Otherwise Available under §102

A

Catchall category where the invention is known but does not fit into categories

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25
Q

Printed Publication under §102

A

Think German Case
* Does the public have access anywhere in the world
* Is it accessible (indexed)

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26
Q

Patent Application under §102

A
  • Does not count as prior art untio it is pushed
  • When that happens, date is retroactive to date of filing
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27
Q

Grace Period under §102(b)(1)

A
  • Inventor discloses and files application within a year
  • These disclosures will not count as prior art:
    1. made by inventor
    2. 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
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28
Q

3 Questions for Grace Period under §102

A
  1. What is the effective filing date?
  2. Prior to filing date, did inventor disclose?
  3. Prior to filing date, did anyone else disclose?
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28
Q

What is anticipation?

A

Prior art has each aspect of claim

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29
Q

Steps for determinign anticipation between prior art and patent

A
  1. Break claim down into elements
  2. Compare every piece of prior art left after 102
  3. Line up elements of claim and prior art
  4. If you get a single “no” does not anticipate
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30
Q

Nonobviousness §103

A

“would have been obvious before the effective filing date…to a person having ordinary skill in the art”

31
Q

What does PHOSITA mean?

A

Person Having Ordinary Skill In The Art

32
Q

Steps for Nonobviousness

A
  1. Determine the scope and content of prior art
  2. Ascertain differences between prior art and claim
  3. Resolve level PHOSITA
  4. Evaluate the obviousness of invention to the PHOSITA
  5. Refine analysis in light of secondary considerations
33
Q

What are the secondary considerations when testing for nonobviousness?

A
  • Commercial success
  • Long felt but unresolved needs
  • Failure of others
34
Q

Is obviousness a low standard for an improvement?

A

No, it is a pretty high standard. The problem and solution must be pretty narrow for an improvement to be deemed obvious.

35
Q

TSM Method

A

Method for evaluating nonobviousness
Did prior art:
* teach
* suggest
* motivate claim

36
Q

What did SCOTUS say when they ruled on the TSM test?

A

They did not overrule the TSM test, but they said it was not dispositive. Instead, it was a good place to start an analysis

37
Q

What is the general question for nonobviousness?

A

Would PHOSITA facing needs in field have seen a benefit to combining prior art?

38
Q

What are the 3 Utility components?

A
  1. Credible utility
    • must do what inventor says it does
  2. Beneficial utility
    • produces some benefit for society
  3. Practical utility
    • be useful for a specific purpose, not just a paperweight
39
Q

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?

A

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”

40
Q

Disclosure requirement

A
  1. Specification
  2. Claim
  3. Best method
41
Q

Company used a process to claim 26 genomes, want to patent, the claim includes any genome created with this process. What result?

A

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

42
Q

What are the factors to consider for undue experimentation?

A
  1. Quantity
  2. Direction/guidance given
  3. Presence of working examples
  4. Nature of invention
  5. State of prior art
  6. Skill of PHOSITA
  7. Predictability of art
  8. Breadth of claims
43
Q

Is the best mode a high standard?

A

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

44
Q

What is the definition of patentability subject matter?

A

“process, machine, manufacture, composition of matter, or improvement thereof”

45
Q

Can you patent laws of nature?

A

No

46
Q

Can you patent physical phenomena?

A

No

47
Q

Can you patent abstract ideas?

A

No

48
Q

Does use of an unpatentalbe element make an invention unpatentable?

A

No, but the unpatentable element must be build upon enough

49
Q

Maching or Transformation Test

A

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

50
Q

2 Part Mayo framework for determining patentable subject matter

A
  1. Determine whether the core of the claim at issue is directed to a patent ineligible concept
  2. What else is in the claim
    • consider claims both individually and in combination
    • Search for an “inventive concept” as the touchstone of patentability
51
Q

Are business methods patentable?

A

Yes, but that is not so solid right now

52
Q

Direct infringement definition

A

Each element of the claim is found in an accused prodoct or process

53
Q

How do you set up evaluating direct infringement?

A
  • Break down the claim elements and the accused product.
  • If all the elements line up, there is direct infringement
54
Q

What intrinsic evidence can be used to deterine direct infringement?

A
  • claim language
  • specification - this is the single best guide for what the inventor meant
  • Prosecution history
55
Q

What extrinsic evidence can be used to determine direct infringement?

A
  • general purpose dictionary
  • technical dictionary
  • expert testimony
  • other publications
56
Q

What is the doctrine of equivalence?

A

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

57
Q

Do you compare the accused devise to the patent claim or the commercial product?

A

The patent claim. That is the part of the patent that gives legal protections

58
Q

Is direct infringement strict liability?

A

Yes

59
Q

Induced infringement definition

A

“whoever actively induces infringement of a patent shall be liable as infringer”

60
Q

Must direct infringement be determined before induced infringement?

A

Yes

61
Q

Is there an intent requirement for induced infringment?

A

Yes

62
Q

What must be proven for induced infringement?

A
  1. the patent exists
  2. induced acts will lead to infringement
    knowledge can be proved thorugh willful blindness
    good faith belief in invalidity not a defense
63
Q

Contributory infringement

A

Assisting infringement in a material way
**often in the form of selling a component/material piece

64
Q

What are the elements for contributory infringement?

A
  • 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
65
Q

What are the defenses in patent cases?

A
  • noninfringement
  • invalidity
  • defenses on patentee’s commercial relationships
  • Defenses on experimental use
  • Defenses on patentee’s conduct
66
Q

Is there a high burden on proving invalidity?

A

Yes, there is a very high burden
Must be proven with clear and convincing evidence, any patent is presumed to be valid

67
Q

Defense on patentee’s commercial relationships

A

Patentee starts selling and licensing patented product in a way that extinguishes patent rights such as exhaustion

68
Q

Exhaustion/First Sale in Patent

A

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

69
Q

Examples of Exhausion in patent

A
  • 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
70
Q

What is the result of exhausion for a patent

A

The patent is rendered unenforceable in that situation
does not invalidate a patent

71
Q

Experimental use for patent defense

A
  • 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
72
Q

Defenses based on the patentee’s conduct

A

Usually while applying for the patent, usually when lying to the PTO

73
Q

What is the effect of a defense on patentee’s conduct

A

If successful, the patent disappears

74
Q
A
74
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75
Q
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IP (4 decks)

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