Patent Law

Question 1

Provisional Patent Application

Answer 1

A provisional patent application is just that—an application. Unlike the non-provisional application, a provisional patent application will not result in a patent being issued.

Question 2

True/False: A provisional patent application is less expensive.

Answer 2

True.

Question 3

What is the purpose of a provisional patent applications?

Answer 3

Its purpose is to serve as a placeholder.It gets the process “on record” so that a non-provisional application can be filed later to protect the same invention. Its importance lies in its speed and its ability to establish that the filer was first to this invention.

Question 4

What does the provisional application require?

Answer 4

A fee and cover sheet that includes:

• application is a provisional application for a patent
• the name(s) of all inventors;
• inventor residence(s);
• title of the invention;
• name and registration number of attorney or agent and docket number (if applicable);
• correspondence address; and
• any U.S. Government agency that has a property interest in the application

Question 5

What does a provisional application establish?

Answer 5

It establishes that, as of the date on which an application was filed, the filer had “possession” of the invention.

Question 6

How long is the pendency of a provisional patent application?

Answer 6

12 months

Question 7

What is a non-provisional patent application?

Answer 7

A patent application, that could result in a patent.

Question 8

What are the 3 basic components of the patent application?

Answer 8

(1) the specification
(2) the claims
(3) the drawings

The application also requires fees, an oath or declaration stating that the invention is original and original to the inventor, and a translation if the application is based upon a foreign, non-English original application.

Question 9

Why are “claims” important to a patent?

Answer 9

Claims can be thought of as the “metes and bounds” of a patent. They describe what the patent is claiming as the invention. The claims define how another product would be infringing on a patent.

Question 10

What questions do the claims answer?

Answer 10

What about the invention described in the patent is new?

Question 11

True or False: Specification as to the written description and claims to the invention are vital to the patent application.

Answer 11

True.

Question 12

Why is it important for claims and description of the patent to be specific?

Answer 12

So a person a who is “skilled in the art” can learn how to make and use the invention. This is the trade off when an inventor files for a patent. It is a social contract.

Question 13

What does the USPTO require for specification?

Answer 13

Specification “must be in clear, full, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the same.”

Inventor must provide sufficient disclosure to enable another to practice the claim of the invention without undue experimentation

Question 14

What is the significance of the drawings?

Answer 14

The drawings illustrate the claims and the specification. The specification and the claims, the non-provisional utility patent application describes what the invention is and how to make and use the invention.
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Question 15

The back and forth between the patent examiner and the patent attorney or patent agent is called …

Answer 15

patent prosecution

Question 16

For an invention to be patentable subject matter, the invention must be…

Answer 16

new, useful and non-obvious

Question 17

“New” or “Novelty Requirement”

Answer 17

To get a patent on an invention, the invention must actually be new. Everything that came before is referred to as the “prior art.” The invention cannot be expressly or implicitly disclosed in any “prior art” references.

If there is already a patent for the invention, a patent application for the invention, a description of the invention in a printed publication, or a product in use that already uses the process used by the invention, the invention does not meet the novelty requirement.

Question 18

Prior art

Answer 18

Everything that came before the new invention

Question 19

Usefulness

Answer 19

The utility requirement requires us to answer the questions “Does the invention do anything?” and “Does the invention work?” with “Yes”es.

Question 20

Non-obvious

Answer 20

An obviousness inquiry asks whether combining the two older inventions would be obvious to “one skilled in the art.” One skilled in the art is similar to the “reasonable person” who appears frequently in other areas of law, but in this case, the reasonably person is one who works in or is skilled in the field of the invention.

Question 21

Non-obvious 3 part test

Answer 21

(1) Determine the scope and content of the prior art
(2) Examine the differences between the prior art and the claims at issue
(3) Analyze the ordinary skill in the pertinent art

(Graham Case)

Question 22

Enablement Doctrine

Answer 22

Limits how broadly patent claims may reach; restricts the scope of the inventor’s patent claim. Also requires inventors to file patent applications before they have proven all aspects of the technology (often times, the inventors will file application before proving all aspects of technology

Question 23

Wand Factors

Answer 23

(1) quantity of experimentation necessary
(2) the amount of direction or guidance presented
(3) the presence or absence of working examples
(4) the nature of the invention
(5) the state of the prior art
(6) the relative skill of those in the art
(7) predictability or unpredictability of the art

Question 24

When are the Wand Factors used?

Answer 24

To determine the specificity of the patent and the claims at issue.

Question 25

Direct Infringement

Answer 25

Direct infringement exists when a defendant makes, uses, sells, offers to sell, or imports into the United States a patented product or performs all of the steps of a patented method.

Question 26

Indirect Infringement

Answer 26

Indirect infringement exists when the defendant does not itself commit direct infringement, but causes another party to do so.

Question 27

What are the 2 types of indirect infringement?

Answer 27

(1) inducing

(2) contributory

Question 28

What is induced infringement?

Answer 28

A defendant has induced infringement when it instructs or causes another party to infringe a patent. For a method patent, a defendant induces infringement if it instructs another party to perform all of the steps of the method.

Question 29

What is a contributory infrigner?

Answer 29

Exists when a defendant sells or offers to sell a component that can only be used in infringing a patented invention.

Example:

Question 30

Patent Term

Answer 30

20 years from the date the patent is issued. Once the patent expires, it is free to public.

Question 31

Name the 2 determination/outcomes of patent infringement litigation.

Answer 31

(1) The patent claims at issue are invalid; or

(2) The patent claims at issue are infringed literally or under the doctrine of equivalents.

Question 32

Claim construction

Answer 32

The process of determining a patent claim’s scope and meaning. The court determines the technical claim language and the common terms.

The terms/language in the claim are given ordinary and customary meaning at the time the claims were filed for the invention AND from the perspective of a person having ordinary skill in the art.

Claim construction is a matter of law.

Question 33

POSITA

Answer 33

Person with ordinary skill in time at the time the claim was filed.

Question 34

Is there a strict formula for claim construction?

Answer 34

No, but the Federal Circuit has given guidance/principals for claim construction analysis (See generally Phillis v. AWH).

Question 35

What may a court consider in a claim construction analysis?

Answer 35

extrinsic and intrinsic evidence

Question 36

Intrinsic Evidence

Answer 36

Primary basis for claim construction. This type of evidence is given more weight than extrinsic evidence.

Examples of intrinsic evidence include the patent’s specification, other claims in the patent, the patent’s prosecution history, the cited prior art, other patents that are related to the patent at issue, and the claim’s preamble.

Generally, the specification is the best tool to determine the meaning of claim language.

Question 37

What is the best tool to determine the meaning of the claim language?

Answer 37

Specification

Question 38

Burke, Inc. v. Bruno Indep. Living Aids, Inc.

What is the holding of this case and how does this relate to claim consturction?

Answer 38

The claim term “floor pan” could not be limited to mean a sheet pan made out of sheet metal, even though the patent specification described the floor pan composed of sheet metal in a single pane.

Question 39

To be successful on an infringement claim, the patent owner must…

Answer 39

Show each and every element of the asserted patent claim or its substantial equivalent is present in the accused’s product or process.

Question 40

Extrinsic Evidence

Answer 40

A court may permit this type of evidence to construe the meaning of the claims, so long is does not contradict intrinsic evidence.

Extrinsic evidence includes expert testimony, dictionary or treatise definitions, inventor testimony.

Extrinsic evidence is best suited for when there is ambiguity in construing the meaning of a claim term that cannot be resolved by intrinsic evidence.