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Patent Bar Study > Patent Bar: The Law > Flashcards

Patent Bar: The Law Flashcards

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1
Q

Five Requirements to getting a patent

A
  1. Patentable Subject Matter
  2. Utility (Useful)
  3. Novel
  4. Non-Obvious
  5. Invention Adequately described.
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2
Q

Patent Eligible Subject Matter

A

Basically anything in the U.S.

  • living organism
  • business methods
  • software

Process, Machine, Manufacture, Composition of Matter

**Speed Bump

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3
Q

1952 Patent Act

A

Anything made by man under the sun.

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4
Q

What is not patentable?

A
  1. Abstract Idea
  2. Law of Nature
  3. Mathematical Equation
  4. Algorithm
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5
Q

Utility

A

Does the invention work the way you are claiming it to work?

Quite different than other Bureaus

Example: Claim to kill cancer, must kill cancer

**Speed Bump

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6
Q

35 USC 102 Part 1: 102 (a)-(b) OLD LAW

A

Any application filed before March 16 2013.

These get first to invent.

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7
Q

35 USC 102

A

Covers Novelty.

Is this invention new.

Defines universe of prior art.

Fishing net Comparison - as you hoist all the fish not all make it to the top. Focus on the things that are caught that are identical to the claimed invention. 102 Rejection.

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8
Q

Novelty

A

Is this claimed invention new.

Exact identity.

Does the prior art exactly describe the claimed invention, If so then you have prior art under 102.

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9
Q

Example: Indigenous People using in a remote part of the world

A

Sometimes will not be prior art.

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10
Q

Two Separate Parts of 102

A
  1. Novelty aspects
  2. Statutory Bars
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11
Q

Novelty Sections of 102

A

(a) Prior Art

(e)

(f)

(g)

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12
Q

Novelty Question of 102

A

Did somebody else do something prior to the inventor?

Needs to be some other party, inventor cannot create the problem

Trigger: Did something happen prior to the inventor inventing the invention

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13
Q

Statutory Bar Sections of 102

A

(b)

(d)

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14
Q

Statutory Bar Question of 102

A

Did the inventor wait to long to file an application in the US?

Otherwise patent eligible waits to long to file.

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15
Q

35 USC 102 (c)

A

Not really tested, abandonment

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16
Q

Old Law: 102 (a)

A

Rejection if before the invention thereof by the applicant for a patent:

  1. Known or used by other in this country,

OR

  1. Patented or described in a printed publication in this or a foreign country
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17
Q

Invention

A

Does not exist until the idea is:
1. Conceived
AND
2. Reduced to practice.

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18
Q

Date of Invention

A

Relates back to Date of Conception

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19
Q

Conception

A

The time you can communicate the idea to PHOSITA and they would be able to do it.

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20
Q

Reduction of Practice

A

You’ve actually done it

OR

Described in a publication that others could do it.

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21
Q

“known or Used in this Country”

A

How the claimed invention works is known by the general public.

Use is known about or done by General Public.

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22
Q

“Patented or Described in a Printed Publication in This or a Foreign Country”

A

Anywhere in the World before conception

Could be:
1. printed patent publication
OR
2. Article published

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23
Q

Old Law: 102 (b)

A

A person is entitled to a patent UNLESS more than one year before the date of application in U.S.:

  1. Patented or Described in a printed publication in this or a foreign Country (Foreign Patent Application),
    OR
  2. In public use or in sale in the U.S.

Trigger Date: Prior to the application in the US, more than 1 year.

Both Inventor or Other can create this problem.

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24
Q

Foreign Patent Application

A

A foreign application filed in that specific foreign country. You have 12 months/ 6 Months to file for priority.

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25
Q

PCT

A

Patent Coroporation Application

Filed anywhere and it is an international application.

Treated as US application if you designate US on the application.

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26
Q

This process is referred to a clock in 102 (b)

A

You have twelve months to file after these or you are out of luck.

To stop the clock, File a US application.

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27
Q

Public Use or On Sale

A

Must be in US.

Knowledge under 102 (b) is not enough.

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28
Q

Exceptions to Public Use or On Sale

A

Experimental Use Exception - is there certain public use that is excused and not considered when started 102 (b) clock.

Public Policy: We want complete inventions to be patented.

Only way to realistically test the invention. MUST be experimental.

IF not applying, Rejections around.

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29
Q

Two Considerations of Public Use as Experiman

A
  1. Nature of the invention
  2. How did the inventor act?
30
Q

Factors to Determine Public Use as Experimental

A
  1. Whether testing of the invention must be done in public by definition,
  2. Amount of control retained by the inventor,
  3. The nature of the invention,
  4. The length of the test period,
  5. Whether payment was made,
  6. Whether there was a secrecy obligation,
  7. Whether records of the experiment were kept,
  8. Who conducted the experiment,
  9. the degree of commercial exploitation during testing,
  10. Whether the invention reasonably requires evaluation under actual conditions of use,
  11. Whether testing was systematically performed,
  12. Whether the inventor continually monitored testing,
  13. The nature of contacts made with potential customers.
31
Q

Frequent Test Questions on Experimental

A
  1. Factors to consider if the experiment was exercised in a certain amount of control.
    -acting like an experiment
    -control
    -purpose is experimental
32
Q

On Sale Bar

A

Only in the US

Sale or Offer for sale more than 1 year.

33
Q

Offer for Sale

A

Sale is not actually required but you can offer it up for sale without a purchaser.

Pre-AIA - secret sale still a sale.

34
Q

Compare and Contrast of 102(a) and 102(b)

A

They both deal with patents and printed publications.

35
Q

What do you need to do in terms of 102 (a) and (b)?

A

What time is my application being filed? When did I file?

36
Q

How do examiners work with date of invention?

A

They assume the date of filing is the date of filing. They look for a reference that beats your filing date.

37
Q

How do you get behind a 102 (a) rejection?

A

The applicant files a Affidavit 131.

38
Q

Old Law: 102 (c)

A

A person shall be entitled to a patent UNLESS they have abandoned the invention.

Never tested.

The abandonment must be intentional.

Abandon an application by not responding to an office action.

Abandon an invention by publicly express that they do not want a patent for the invention.

39
Q

Old Law: 102 (d)

A

May not get a patent IF:

  1. The applicant on the foreign application must be the same as the applicant on the US filing.
    AND
  2. The invention that is the subject of the foreign application must be the same as the invention that is the subject of the US Filing.
    AND
  3. In the case of utility applications, the foreign application must be filed more than twelve (12) months prior to the US filing.
    AND
  4. The foreign patent application must mature to an issued patent prior to the US filing.
40
Q

Question of 102 (d)

A

Did you file within 12 months of the Foreign Filing date?

Longer than 12 Months eliminates the foreign priority date.

Same inventor, Same invention, Issued Patent

41
Q

Where they can trip you up with 102 (d)?

A
  1. How long do you have to claim Foreign Priority?
    • 12 months for utility
    • 6 months for design
  2. They will tell you patent is issued and available for the public. In US, when you get to the end of successful application, you receive a Notice of Allowance and pay an issue fee. 10-12 months later you get an issued patent which would turn it available to the public.
    -Must be an ISSUED PATENT
42
Q

Old Law: 102 (e)

A

Not about fairness.

A US application is considered Prior Art as to 102 (e) as of its filing date.

Very difficult to get behind this date.

43
Q

Old Law: Types of 102 (e)

A
  1. Domestic
  2. Foreign
  3. International
44
Q

Foreign Applications

A

Will not become prior art until the application grants or publishes NOT FILING DATE

45
Q

Domestic Application

A

US filing date is 102(e) date. MUST ISSUE OR PUBLISH

46
Q

International Application

A

If you file before November 29, 2000: 102 (e) date when Fee, Oath and Translation is delivered to PTO. (old international 102(e)

If you file after November 29, 2000: 102 (e) will have a 102 (e) if they designate the US and publish in English.
-default is language of filing location (assume this on questions if not specific)

47
Q

Old Law: 102 (f)

A

Person shall be entitled to a patent UNLESS you did not invent.

Someone learns of the invention from someone else. That person cannot file an application.

48
Q

What is the difference between 102(a) and 102(f)?

A

102 (a) deals with people who have conceived an invention. They are still inventors but not the first inventor.

102 (f) deals with if they are a person who conceived or if they just copied it.

49
Q

Old Law: 102 (g)

A

(1) Something that is abandoned, compressed, or concealed will not be prior art.

(2) Two Things
- Interference - multiple people that have filed an application claiming same invention.
- Ex Parte - subject matter RTP by another AND no abandonment, suppression or concealment. **Examiner knows something and rejects it.

50
Q

Interference Practice

A

Conception –> Reduction to Practice (actually or constructive)

  **All with Reasonable Uninterrupted Diligence for the Second to File

First to File - Senior Party
Second to File - Junior Party

**All inferences fall towards Senior

Evidence Needed:
- Corroboration and has to be more than inventor’s words.

51
Q

Can Attorney break diligence?

A

Yes

52
Q

131 Affidavit

A

You need to file this to prove that you have a date of invention that is earlier than your filing date.

Date of invention if relevant to (a), (e), (f) and (g).

Can’t swear behind a statutory bar.

In NAFTA on or before December 8, 1993.

In WTO on or before January 1, 1996.

***Look at the dates of the Countries joining WTO. They must be at the time of conception.

53
Q

TRANSITIONING INTO POST AIA

A

POST AIA

54
Q

Post AIA 102 Breakdown

A
  1. AIA 102 (a) equates to Old 102 (a), (b) and (e). Effective date is ONLY filing date.
  2. AIA 102 (b) is grace period exceptions.
55
Q

When does Post AIA apply?

A

To application filed on or after March 16, 2013.

If anytime in a filing you have even one claim that relies on new subject matter, that application will be examined under the new laws. BUT 102(g) STILL COVERS FROM OLD LAW.
*****Must Point this situation out to the USPTO as much as they know.

56
Q

New 102 (a)

A
  1. The claimed invention was:
    • patented (notice of grant)
    • described in a printed publication (found and teaches)
    • public use (informing of use), or on sale (publicly informing of use), or otherwise available to the public (informing of use of invention/posters) before the effective filing date. ANYWHERE
  2. The claimed invention was described in:
    • US Patent
    • US Published Application
      **Effective Filing Date - Earliest Filing Date even Foreign Applications

**No geographic limitations
**Must be enabling to be considered prior art

57
Q

New 102 (b) : Exceptions to Prior Art

A

How to get prior art kicked out:

  1. Disclosure by you, co-inventor, or someone who got it for you within one year prior to filing. OR A third party disclosure that you can predate with a better disclosure of your own.**
    -Your disclosure has to be specific and complete.
  2. Disclosures appearing in applications, patents and WIPO PCT publications of Subject Matter obtained from inventor, co-inventor OR before filing of patent subject matter had been publicly disclosed better by inventor, co-inventor or 3rd party OR common ownership (not time limited).**
    -Look at earliest effective filing date

**Within 1 year and of the same stuff that was disclosed

58
Q

New 102 (c)

A

Common ownership to exempt prior filings of applications.

Joint Research Agreements

59
Q

New 102 (d)

A

Look for the most effective filing date to get the earliest. You can go back to foreign.

60
Q

New Law: How to prove exceptions?

A
  1. Inventor’s Own Work - 1.130(a)
  2. Third Party Intervening Disclosure - 1.130 (b)
61
Q

Inventor’s Own Work Exception Affidaits

A

Affidavit 37 CFR 1.130 (a) - MUST
1. Be an unequivocal statement from the Inventor or Co-Inventor that they invented the disclosed Subject Matter.
AND
2. Reasonably explain the presence of additional authors.

62
Q

Third Party Disclosure Exception Affidavits

A

Affidavit 37 CFR 1.130 - MUST
1. Specifically identifying the subject matter publicly disclosed
AND
2. Establish the date and content of the earlier public disclosure.

IF printed publication, must attach copy. IF NOT, must describe the disclosure with detail and particularity.

63
Q

Who may file an Affidavit?

A

The applicant or patent owner may submit an affidavit or declaration.

64
Q

Joint Research Agreement Requirements

A
  1. The Subject Matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was IN EFFECT BEFORE FILING DATE.
  2. The claimed invention must have been made as a result of the activities undertaken within the scope of the joint research agreement;
    AND
  3. The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.
65
Q

Which sections of Pre AIA 102 can you not swear behind?

A

Statutory Bars

66
Q

Which section of Pre-AIA 102 can be the basis for a provisional rejection?

A

102(e)

67
Q

35 usc 103 (NOT CHANGED BY AIA)

A

An invention is not patentable if it is merely an obvious variation to PHOSITA on the prior art.

68
Q

How to determine obvious?

A
  1. Establish the prior art.
  2. Determine what the differences are between the prior art and the invention AND Determine level of ordinary skill THEN determine if it’s obvious to that level.
  3. Other consideration
    - it meets with great commercial succes,
    - there was a long-felt need in the art, AND/OR
    - there was a failure of other to resolve the problem.

**Every element, step, function must be present in the prior art, AND there must be an indication in the prior art that the invention would be successful in achieving the desired result.

69
Q

PHOSITA

A

Not Patentable : If one of the “ordinary skill” attempts something that they reasonably think will work and it does.

Patentable: If one of “ordinary skill” attempts something that one of ordinary skill would have thought would end in failure but doesn’t.

70
Q

Seven KSR Rationals which can render an invention nonpatentable as being obvious

A
  1. A combination of elements of the prior art according to known methods to yield predictable results;
  2. Substitution of one known element for another to obtain predictable results;
  3. Using known technique to improve similar devices in the same way;
  4. Applying a known technique to a known device ready for improvement to yield predictable results;
  5. “Obvious to Try” - choosing from finite number of identified predictable solutions, with a reasonable expectation of success;
    - No 20/20 vision, Asses steps taken at time of invention.
  6. A case of known work in one field of endeavor prompting variations of it for use in either the same field or a different one based on design incentives or other market forces, if the variations are predictable to PHOSITA.
    - bleeding over of technologies
  7. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
71
Q

How is Obviousness and Predictability tested?

A

PHOSITA can not just claim that the invention is predictable, they must EXPLAIN WHY.

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