Patent Law Flashcards
What is a Patent?
What are invention patentable?
- monopoly granted by the US government covering a design or function
- where the individual must enforce the patent, gov. will not enforce
- and person entitled to patent unless gov. can prove your not entitled to one
should be able to get a patent with anything new and useful process, machine, manufacture, or compensation of matter and useful improvements thereof, subject conditions/requirement of this title
What do you get when you get a patent?
- a monopoly which you can control the amount paid for the product from 20y after the date of filing
- apply market economics and determine how much to charge based on how much the market can bear
Name the applications for a patent.
What’s the purpose of having different types?
What is the individual total cost generally associated with them?
Describe each type.
Protects patents in areas of marketability, so must chose wisely to acquire rights in the type not already USG protected or in public domain.
Plant, $5k
asexually reproduced plant (US rose with good stem spliced with EU rose with big bud)
Design, $1.5k
protected ornamentation (shoe tread, Statute of Liberty); requires picture and a little bit of explanation
Utility, $5k
function or use (rubik’s cube); requires design or drawings
Provisional, $2.5k
good for 1y; after 1y file a utility or dismiss; quick patent; no formal requirements such as a claim.
Discuss Patent Economics.
There is a monopoly. Inventor has invested in patent, now we need to get in the black. Consider: What’s the value, benefit, and cost.
Money and Business tend to control everything. Let’s make a million dollars, acquire the patent rights and find the market.
United States Patent System is based in constitutional law starting with Article * Section * Clause * stating…
Rationale?
Article 1 Section 8 Clause 8 stating congress shall have the right to promote science and the useful arts by securing for limited time their writings and discoveries (20 years)
Society as a whole can advance
American Inventors Protection Act
First to file rather than first to invent; April 2013
What are the elements to get a Patent?
• Patentable Subject Matter
o processed machine made or made by man
• Novelty
o exact same thing had not been done before; must be new
• Non-obviousness
o non-trivial extension of the arts is required; would someone skilled in the art try it; stiffest element bc once idea communicated it seems obvious
• Utility
o does it have a purpose or effect that is useful; does/changes something for some purpose or effect
• Enabled
o Provided enough information for one skilled in the art to practice the invention; “one skilled in the art”: someone who would understand the technology without lay explanation; pick up a patent; read it; and practice the invention without additional materials
Describe a Patent Description.
Procedure for creating the Patent Application.
Procedure when filing with USPTO.
• Start out with a patent #
• Date of patent
o effective date of when the monopoly went into play
• Title and what it covers
• Inventor and maybe assignee
• Split in 1995: before, 17 years after the date of issuance & after, 20 years after the date of filing
PatApp: • Cover Letter • Specification o directions; • Drawings o explain to someone else how to use or make, here the use of pics is prevalent • Claims • Oath/Declaration • Power of Attorney o I hear by appoint Chris to go prosecute this at the PTO • Money Fees
USPTO:
• must tell them the type of patent
• original application- first time to file
• claims of priority
continuation- file again on an original patent
continuation in part- file again on an original patent but include new claims
Divisional- response to election/restriction action to divide the claims in the patent and prosecute parallel
Once filed get a receipt and application #; now can mark patent pending; keep #’s secret
Initial Examination
Assigned to Examination Group: • Examiner gets points off of: o reading the application • 18 months o 2 rounds of rejection • 6 months per round o disposition • 1 month o Issuance • 4 month
You may appeal the patent if it does not go through (2 years) ($15-20k just to appeal)
35 USC 132: Objections, Rejections, and Election/restriction
o objections – you have the form wrong, relatively simple to fix; object to details in the claim
o rejections – things like anticipation or obviousness, subject matter, novelty, and enablement ; 101, 102, 103
o election/restriction – patent examiners specialized to certain areas, here you must either elect or restrict your invention to a single patent for a single invention; more than 1 invention then choose 1
What is not patentable?
Abstract Ideas, Laws of Nature, Physical phenomena
3 types of Utility Patents claims and 3 different types of utility.
Specific Utility: particular purpose; written description;
i.e.: claims to cure headaches; consider all cellular material or just the cellular material in a bamboo stick used to light the bulb
Credible: extremely efficient; works for what you say it is for; cannot claim something unproven;
i.e.: machine in perpetual motion
Substantial Utility: add to the stock of knowledge; arguing you need to be something more than what is already known
i.e.: cannot claim genetically altered mouse as snake food; but can claim the GMO mouse whose immune system can withstand a carcinogenic nut.
Types: cannot write a specific utility with general utility claim
General Utility - useful for any purpose
Specific Utility - useful for a particular purpose
Moral Utility - the ability to advance particular moral ideals of a particular sect of society
i. Why is it problematic?
ii. Because it imposes the morals of the majority on the rest of society. Morals are generally tied to religion.
i.e.: fraud, showing note thing and selling another
Where does anticipation stem from and define it.
Consider genus and species claims.
35 USC 102 - when the exact same invention is found in prior art; does not have to have the exact same thing to be anticipation but it has to be close;
Consider: what is determined by the claims must be new; claims define the meets and bounds of the invention; not in the claims then they don’t have a legal right to it.
If anticipated then claims “read on” the device. Read onto the claim are words of practice.
i.e.: consider a genus (broad) or species (narrow) claim. Genus requires more disclosure such as a similarity of structures, shared properties, properties which are different, and physical/chemical compounds; for this broad claim you must have nothing in the prior art disclosing anything within the scope, thus no other species within the genus claimed; whereas, a species claim can be valid even being in a prior art genus area, so long as the claim is not closely similar to prior claims.
35 USC 102 old section, then describe how the new section changes 102.
Novelty - US does not trust foreigners, has to be in writing if it comes from another country, first person to invent in this country even if the invention was invention in EU a year prior.
New- Now the first to file in the US and tells everyone to be quiet before. Although, the constitution requires it to be the inventor who gets the patent. Make a constitutional claim now if not the true inventor such as, “He himself did not invent the patent and therefore is in violation of the patent.”
(a) Must prove that someone else knew about it before you invented it, if so then you do not get the rights to the patent
(b) public use on sale
a. what is a public use – can occur even though public does not have access to device, it’s the benefit of the invention that gets tracked
i. exposed in public
b. what does it mean to be on sale – got the idea close enough to what is going to be sold
(c) did they abandon the invention
a. second person to file
(d) PCT & NAFT agreements that govern how patents work around the world that states if file in one country then must file in another country within 12 months
(e) Invention was described in
a. there is one grace period
(f) Derivative work of someone else; unless he himself did not invent the subject matter
(g) abandoned, compressed, or concealed
Consider the fake juice container on the store counter with the actual juice supply underneath which requires less cleaning and is lower health risk. ∆ brings a claim for moral utility of the patent because it commits fraud on the consumer. What’s the courts rationale behind consumer fraud and the patents moral utility?
Patent practice focuses on what?
Where and what should the ∆ filed additionally?
Just because it’s receiving fluid from underneath does not deprive a moral utility. In the patent world deceptive trade practices is a different issue. The USPTO looks to where the utility is (function/use) and looks past deceptive practices when the benefit of the utility is high.
Patent practice focuses on the legal and not illegal.
∆ should of filed a common law counterclaim of fraud.
35 USC 103
Describe it.
Describe the test.
What are the secondary considerations.
Nonobviousness
When a variation of the invention is found in the prior art and the current invention is obvious based upon a small amount of variation some skill in the art; consider whether if the something claimed advances the prior art in a direction where it was originally headed.
Note: obvious a change in substance changes the patent, but look something you would not expect
Test:
ascertain the scope of the prior art in 102;
ascertain the differences between the prior art & the invention (looking at subject matter as a whole not individual elements)
Secondary Considerations: Objective consideration U. Unexpected results C. Copying by competitors C. Commercial success (rubik's cube) P. Proper failure of others I. Independent development L. Long felt unresolved need (selling of 1M units in 1 day) L. Licenses S. Skepticism
Consider public use with respect to Statutory bars.
Public v Private use
Experimental Use
On Sale bar
3p activities
Non-informing use
Public use (public benefit) means the inventor deprived benefit from the invention by use or sale of the product (any benefit received by inventor); Consider the number of people that saw the invention; intent of observer (allowed to look at everything or shown in manner to preserve a secret so people did not know what they were looking at); number of users in association of invention; extent of observers understanding invention
Public use applies when a private person benefits from the invention within the public (benefit received in public); consider the public use referring to society’s benefit; consider out how someone skilled in the art would get access to it
Private - inventor invents device brings to work but maintains control of the secret the entire time, this is not public use; rationalized due to instant pop craze (rubik’s cube)
Exp. Use- item was used in a public location but does not reveal public knowledge because its not public use that is prohibiting its public knowledge
i.e. roadway installed 6 prior patent filing to see how it would handle traffic, was considered experimental use.
On-sale- product is subject of commercial offer to sale and was ready for patenting; does not actually mean you have sold a physical product, but you have disclosed the invention and got cash for the invention.
3p- must consider how the information got into the public; info disseminated broadly or through exp. use
Non-inform.- take the patent and use in the public without the inventor knowing
A __________ ___ is considered an action that creates a statutory bar under the public use doctrine, but there are factors to discredit this. 11 factors.
Experimental Use
- Control of the invention
- Monitoring of the experiment
- Purpose or intent in testing invention (red. to practice)
- ascertaining the proper results
- making alteration when deemed necessary
- unrestricted use by others
- compensation for use or for profit
- payment of expenses
- retention of ownership
- whether the experiment was on the claimed item
- markings or contracts of confidentiality and secrecy
If someone invents something and keeps it secret or hidden and then many years later someone else files for patent on it, who wins?
2nd person because first person kept it a secret (deprived society of the benefit) and second person filed first unless a fraudulent taking
Think of it as the first person to give information in exchange for a monopoly.
Party would want to argue abandonment, suppression, & concealment.
Look for novelty in an invention from what date?
Priority Date; can look back to parent patents date if referencing them