Patent

Question 1

The patent statute states:

Answer 1

“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.”

Question 2

The elements of patentability are:

Answer 2

1. Patentable subject matter
2. Utility
3. Novelty
4. Nonobviousness
5. Disclosure

Question 3

The following are not patentable subject matter:

Answer 3

1. Laws of nature
2. Mathematical formula
3. Physical phenomena
4. Abstract ideas

Question 4

Purification Patents

Answer 4

Can patent process of purifying a natural substance

Question 5

Activity Method Patents

Answer 5

The machine-or-transformation test (not the exclusive test)

1. it is tied to a particular machine or apparatus OR
2. it transforms a particular article into a different thing

Question 6

Can you patent a medical diagnostic method?

Answer 6

No.

Question 7

What type of DNA is patentable?

Answer 7

Complimentary genes (don’t exist in nature)

Question 8

Patents for computer programs

Answer 8

No
Flook - no mathematical formulas
Yes
In Re Alappat - method to make a machine display smooth lines

Question 9

Transformational test

Answer 9

1. Determine if the patent is directed to one of the inelligible categories
2. If it is directed to an ineligible category, is there something more? - what is the inventive concept, is it something more than well understood routine activities in the industry, or conventional steps set out in high level of generality.

Question 10

To have utility, a patent’s use must be:

Answer 10

1. specific (what applications)
2. credible (laugh test)
3. Moral (no gambling or the like)
4. Use beyond frivolity (not mere fashion)

Question 11

To be novel, a patent must not:

Answer 11

1. Be out there in the prior art
2. Used by others in the country
3. Be described in a printed publication domestic or international

Question 12

Use in the world occurs when:

Answer 12

1. someone uses it for purposes other than testing and the use is not protected by methods to keep it secret

Question 13

Elements of non-obviousness

Answer 13

1. Scope and content of the prior art
2. Differentiate between prior art and claims
3. Look at the level of ordinary skill in the art

Question 14

Indicators of non-obviousness

Answer 14

Commercial success
Long-felt need and failure by others
Award and praise

Question 15

Requirements of disclosure:

Answer 15

1. a written description of the invention, and of the manner and process of making and using it,
2. in clear terms so as to enable any person skilled in the art to make or use it

Question 16

Problems that arise when disclosing groups of claims

Answer 16

Narrowing Problem - don’t give the patent user the way to do “it” because just gave too much information

Expansion Problem - gave a specific use, and then wanted it expanded to a larger category (having gene for rat proteins and claiming gene for all mammal proteins)

Question 17

Undue experimentation doctrine

Answer 17

if it takes too much experimentation to figure out how your invention works, the invention hasn’t been specifically described to be enabled

Question 18

For literal infringement to occur

Answer 18

Every element within a claim must be contained in an infringing product for it to infringe

Question 19

Infringing under the doctrine of equivalence

Answer 19

Where an accused product copies 4 (of five) elements of a claim, and varies the fifth element, the accused may still infringe if they have merely used an equivalent “thing” where the fifth element would be

Question 20

Damages for infringement

Answer 20

1. Injunction
    For the life of the patent
2. Damages
    Measured by either:
    1. Lost profits
    2. Reasonable royalties