Patent Law

Question 1

First US Patent Law

Answer 1

Adopted by congress in 1790 and the Patent Act of 1952 plus its many later amendments governed patent law until Obama sight the American Invents Act (AIA) on September 16, 2011.

Question 2

AIA

American Invents Act

Answer 2

Signed by Omoba in 2011. Both of the prvisions of the 1952 and the federal case law interpreting it will be applicable for many years to come.

Most of the AIA’s important provisions apply only to patents resulting from applications filed on or after March 16, 2013.

Question 3

Applying for a Patent

Location

Answer 3

Must be filed with the U.S. Patent and Trademark Office (PTO). The application specifies the names of the enventor or inventors and who owns the patent if the owner is someone other than the inventors.

Question 4

“assignment-at-issue”

Answer 4

usually a coporation that employed the inventors

Question 5

The Application

Answer 5

Must contain a thorough and concise description of the invention and drawings. Must mee the enablement requirement. Not required to have actually made the invention physically. Must also include disclose the “contemplated” best mode for putting the invention into practice.

Question 6

The claims

Answer 6

After the written description and drawings, the patent includes “claims” which precisely delineate the intangible paroperty right the applicant is askinging the PTO to grant.

To determine exactly what the invention is, one must look at the precisely drafted claims. When a patent owner sues for patent infringement, the owner is actually suing for infringement of one or more claims within the patent.

Question 7

“Provisional application”

Answer 7

Since 1995 US law has permissed a “provisional applicatin’ which can be easily advantageous for individuals, amall business, and nonprofiets because it allows for the defferal closts of patenting for up to a year.

Question 8

Enablement Requirement

Answer 8

Must describe the invention with sufficient thoroughness and conciseness to enable a hypothetical “person having ordinary skill in the art” to make the invention and put it into ptractice without undue experimentation

Question 9

“art”

Answer 9

refers to the relevant field of technology.

Question 10

“contempolated” best mode

Answer 10

Obviously, the application must disclose at least one mode (method for marking and putting into paractice) or it will ntot be enabing. In addition, if the inventor(s) believe at the time the application is filled that a particular mode is the best one for making the invention and putting it into practice this method must be disclosed in the application.

Question 11

Requirements for Patentability

Answer 11

1. ) patenentable subject matter
2. ) useful
3. ) novel
4. ) the result of a patent application that was originally filed within on year after certain actions that revealed the invention
5. ) nonovbious

(not obvious to an ordinarily skilled practitioner in this area of technology).

Question 12

Prior Art

Answer 12

Consists of either the following:

1. ) A patent anywhere in the world
2. ) A printed publication anywhere in the world
3. ) Evidence of a “public use” of the invention that took in the US
4. ) Evidence that the invention was placed “on sale” in the US.

None of these categories of evidence can be prior art if the invention reveald in that evidence can be prior art if the invention revealed in that evidence was still experimental at this time; in orther words, that is, the inventors did not know for certain whether their invention would work.

Question 13

“Public Use”

Answer 13

an elusive concept, but essentially means either that the invention was used by someone else who was not under a duty of confidentiality to the inventor or to the inventor’s employer, that its use was viewed by such a person, or that it was demonstrated to such a person.

Question 14

Patentable Subject Matter

Answer 14

1. ) Machines
2. ) manufactures (that is products)
3. ) Compositions of matter (ex: metal alloy)
4. ) Processes
5. ) Any imporvement on the first four categorie on the first

Question 15

“Utility Patents”

Answer 15

Regular Patents

Question 16

“Design Patents”

Answer 16

non-functional ornamental design elements in a functional product.

Question 17

Biotechnology processes and products

Answer 17

Court upheld the validity of a patent on a new bacteria created by genetic engineering that would “eat” crude oil in an oil spill. Observed that Congress had intended to provide protection to “anything under the sun made by man” if it needs other patentenability requirements.

Question 18

Computer Software

Answer 18

Softare can be a patentable invention as long as it meets the other requirements of patentability.

Question 19

Utility

Answer 19

The requirement merely means that the invention must be operable and achieve a useful result. “Operabe” and “useful result” essentially mean that it actually does something aand does not defy the laws of physics.

Very low threshold and will almost always be fulfilled.

Question 20

Novelty and Delayed Filing

1952

Answer 20

an inventor should not receive a patent if someone else )other than this inventor) had a patent issues, a created a printed publication, made a public use, or put an invention on sale before this inventor invented, where the previous invention contained all of the same functionlal elements as the current one.

Question 21

AIA new rules

First Rule

Answer 21

No longer determine novelty based on the inventor’s date of invetion. An inventor will not be entitled to a valid patent if someone else had created prior art showring and identifical invention any timebfore the curren tinventor filed the patent application.

Change from an FTI to FTF

Question 22

Second Section

Answer 22

Specifies that if either Inventor X or someone else created one of these pieces of prior art more than one year before X filed her patent appliction, X is not entitled to a patent.

Question 23

One Year Requirement

Answer 23

Although the rule requiring X to file a patent aplication within one year after certain events can be applied to something someone else has done, as we have just seen, another common application of this filing-within-one-year rules is to things that Inventor X has done himself. “grace period”

Question 24

Section 102.b

Answer 24

the AIA changes the rules. If someone other than the inventor has created any of the four tpes of prior art even one day before the current inventor files her patent aplication (or one day before the current inventor “discloses” her invention by herself creating prior art), the current inentor is barred from obtaining a valid patent.

Question 25

1952 Patent Act

Answer 25

the US FTI system provided that an inventor who was not the first one to file application still had the opportunity to prove that he invented first. If he proved that he was the first invetor and also that (before the first filer invented) he had either 1.) actually made the invention or 2.) continually used reasonable diligences to make the invention (even if he ended up making it after the first filer invented) or 3.) engaged in one of the activities that created pior art, he was entitled to the patent.

Question 26

Invention Occurs when

Answer 26

For all puraposes in US patente law, an ‘invention’ occurs when the inventor or inventors have acheived a “complete mental conception” of an operable invetion–an invention that the inventors know will work as intended and is no longer experimental from a scientific of engineering perspective.

Question 27

There cna still be:

Answer 27

a question of whether alleged inventors actually were independent inventors at all, or derived their ideas from someone else, but there will be no contest about the ‘date’ of invention.

Question 28

How the totality of the circumstances of those case comports with the policies underlying the public use bar.

Answer 28

1. ) Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available
2. ) favoring the prompt the widespread disclosure of inventions
3. ) allowing the inventor a resonable amount of time following sales activity to determine the potential economic value of a patent
4. ) prohibithing the inventor from commerially exploiting the invention for a period greater than the statutorily prescibed time.

Question 29

Experimental Use

Answer 29

A question of law, the totality of the circumstances must be considered, including various objective indica of experimentation surrounding the use, usch as the number of prototypes and duration fo testing, whether records or progress reports were made concerning the testing, whether the patentee received compensation for the use of the invention, and the extend ot control the inventor maintained over the testting.

Question 30

Nonobviousness

Answer 30

Requirement provides that an inventor is not entitled to a patent on an invention if hypothetical ordinarily skilled practitioner in this art would have viewed the invention as representing only a trivial, or obvious, advance over the cumulative prior art.

Question 31

Nonobviousness

Patent Act of 1952

Answer 31

Under the 1952 Patent Act and earlier legislation, this determination was made based on what the prior art revealed at the time of this invention. Under the AIA, the determination is made based on the pior art existing at the time the patent application is filed, which means that in many cases there may e more prior art available that can be used to show that the invention was obvious.

Question 32

If a question of nonobviousness areises

Answer 32

The first step is to analyze the relevant prior art.

It is common for the PTO and the courts to combine two or more pieces of prior art in the same or closely related field of technology and say something like “the teaching of this prior patent, when read i the light of the teachings of this prior printed publication.

Question 33

Even if after studying prior art then….

Question 34

Focuses on the following questionsL

Answer 34

If X’s invention was so obvious, then

a. ) Why was the product so commercially successful?
b. ) Why had there been such a long-felt need for solving the problem that Inventor X solve?
c. ) Why had others tried and failed after substantial efforts to find the solution that Inventor X found?
d. ) Why did one or more competitors start copying X’s invention rather than relying on their own solutions?

Also, if there is evidence to show that X/s invention produce a result that was surprising or that was contraty to conventional taechings in this area of technology, this very strongly points toward nonobviousness.

Question 35

Ownership of Patent Rights

Answer 35

ownership of patented inventions or rights to use them are determined by state law. An owner can sell or otherwise transfer patent ownership to someone else by executing a written assignment.

Question 36

“Hired to invent:

Answer 36

hired to do research and solve this or a similar problem

invents something on company time while using company resrouces, the invention and any resulting patent belong to the company without the need for an express assignment to the employer.

Even if the employee was not hired for inventive work, if she invents something on company time or using company resources, the company will be granted a non exculsive license to use the patented invention within its business without payment of a royalty.

Question 37

Infringement

Answer 37

When a patent owner sues for infringement, he is alleging that the defendant infringed one or more of the claims in the patent. The invention is actually defined most precisely in the claims.

If the defendant’s products contain elements a-d, it litterally infringes even if defendant’s product has one or more additional elements.

Question 38

Doctrine of equivalents

Answer 38

If it does not include an element, it does not infringe. It defendant’s product contains one or elements that are similar but not identical to the coreesponding element in the plaintiff’s patent claim, there is no literal infringement but there could possibly be infringement.

Question 39

When can a patent holder seek to establish patent infringement?

Answer 39

Demonstrate that every element of a claim is 1.) literally infringed 2.) infringed under the doctrine of equivalents.

Question 40

Remedies

Answer 40

A patent owner who successfully sues for infringement can obtain an injunction and damages. Damage awards in patent cases, which can be in the many million sof dollars, can include losst profits on sales of a patented item that the owner sould have made it if hadn’t been for the infringement, lost profits on sales of unpatented items that customers would have bought along with the patented items, a reasonable royalty on the defendandt’s sales that the patent owner probably would no t have made for varous reaons, plaintiff’s losses because it had to drop prices as a result of the illegal competition and interest on these amounts.

Question 41

International Patent Law

Answer 41

no “international” patent

The Paris Convetntion is the most important international treaty dealing with patent application filing. It provides that, if someone files an application in one member nation, the applicant can file for a patent in another member nation within one year and keep the original filing date.

Question 42

The Patent Cooperation Treaty (PCT)

Answer 42

is also very important to those who wish to file for patents on an invention in multiple countires. If an inventor files in one member country, then indivates within one year that this is an international application, may have up to 30 months total (18 months added to the first 12) to file applications in other member countries.