US Patent Law: Substantive Law Flashcards
What is the constitutional basis of US Patent law
Its written in the constitution, and thus congress is not allowed to make federal laws. Thus, no independent states law
Inventor role in application pre-2012
Had to apply to the patent themselves. It was a first to invent system and not a first to file, thus, the role of the inventor was more important.
Who is the inventor
The person responsible for the conception of the invention. Does not require reduction to practice. Inventor could be group leader and not visiting researcher.
Merely following instructions to make the product does not make someone an inventor. Acromed v Sofamor Denek
Joint inventors
When invention follows a form of collaboration or concerted effect there will be joint inventors.
Contribution must not be insignificant in quality, when the contribution is measured against the full invention.
Unless agreed differently, how much do joint inventors own?
An equal undivided share
Inventor’s oath states
Such individual believes himself or herself to be the original inventor or an original inventor of the claimed invention in the application.
Penalty is perjury- Its like a statement that says you are not trying to defraud the patent office.
Requirements for application
Written description (support)
Enablement (sufficiency)
Best mode
Clarity, Preciseness
Enablement
Satisfied where the disclosure is such that it teaches the skilled person how to make and use the full scope of the claimed invention without undue experimentation. Where it claims a class, the entire class must be enabled.
Much like biogen insufficiency.
An inventor can only claim what he has invented and described - O’Reilly v Morse
Satisfied upon determining that the claimed invention is enabled without undue experimentation.
Enablement date of assesment
Date of filing of the application. Must be based on publicly available material. Unpublished third party applications cannot fill in the gaps.
Undue experimentation Wand Factors
Quantity of experimentation needed to make or use the invention based on the content of the disclosure.
However, Wand factors are illustrative only (Amgen v Chugai Pharma)
Reasons for enablement requirement
- Teaching aspect, so people know what is covered by the patent and what is not
- To ensure that the invention is sufficiently concrete to warrant a patent. Patents should not be granted for general ideas.
- No requirement to disclosure the underlying principles (why it works)
Written description requirements
Much like Support. Must be met in the original application. Purpose is to see whether the claim corresponds to the description.
It is a material requirement, must be in all claims
Definiteness requirements
The specification shall conclude with one or more claims which point out the subject matter which the inventor or a joint inventor regards as the invention.
Matter of law and not fact means that this matter is decided by a judge and not a jury.
If claims uncertain, “insufficiency by uncertainty”, patent can be deemed invalid, as it would fail to inform with reasonable certainty those skilled in the art about the scope of the invention.
Best Mode 2 part test:
Whether at the time of filing the inventor contemplated a best mode of practising the invention (subjective)
Is that best mode adequately disclosed
(Not necessarily the optimal, just the preferred one at the date of filing).
What is a Reference
An invalidating item of prior art
What is an effective date?
The date a reference became part of the state of the art
Grace Period Length
12 months before the effective filing date of the claimed invention
Conditions for Grace Period
If disclosure was made by the inventor or joint inventor.
If the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.
Examples of other jurisdictions with Grace Period
Australia, new zealand, japan,
China etc already have this
Important for academics too
World going towards Grace period of 1 year
Strict identity test
For novelty, each element must be there for novelty anticipation.
Mosaicking in novelty
It is only permissible to combine prior art for the purposes of novelty only where the latter reference incorporates the earlier one by reference. Same as uk.
Disclosure requirements
Must be in public, meaning that someone else is not under any limitation, restriction or obligation of secrecy to the inventor.
This applies to uses by the inventor or third parties. There is no enablement requirement for devices that work in public.
The use of a drill underground on public land amounted to public use.
- In UK not disclosure, as standard is that someone must have been freely available to see it.
Process patents. Trade Secret Election
Where the inventor uses a process and sells a product based on that process before the filing date they are bared from patenting the process.
You basically have a year to decide patent or trade secret.
Experimental Use exception
Where use of invention before filing date was an experimental use then it is not a public use.
Non-obviousness trinity of cases
Graham v John Deere (1966)
Graham v John Deere (1966) four limb test resembles:
Pozzoli
Graham v John Deere (1966) test:
First, determine scope and content of prior art
Second, compare difference between prior art and claims
Third, determine level of ordinary skill in the pertinent art
Fourth, determine ultimate question of whether claims as a whole would have been obvious to one of the ordinary skill at the time of the invention
Requirement for non-obviousness used to be a flash of genious
Claims being obvious
Teachings, suggestions or motivation of multiple patents, the effects of which known to the design comunity or present in the marketplace. The background knowledge possessed by a person of ordinary skill in the art
KSR Guidelines for non-obviousness:
Bonus effect
Substitution of known element for another to obtain predictable results
Known technique to improve similar devices in same way
Obvious to try
Secondary considerations for non-obviousness
Failure of others
Long-felt need
Experts opinion
Commercial success
Copying (in UK not an indication)
Grounds of utility
Operability - invention must actually have to work
Specific or practical utility - similar but not as significant as industrial applicability
Moral utility - not injurious to public wellbeing
Can medical methods and animal varieties be patented?
Yes.
What can be patented?
Anything under the sun that is made by man. With the limitation of caselaw somewhat similar to the exclusions in epc.
Can tax strategies be patented?
No
Can human organisms be patented?
No
Alice Corp on Patentable subject matter
Laws of nature, natural phenomena and abstract ideas should not be patentable, as monopolization of these would tend to impede innovation more than promote it.
Even if falling within exception, if the claims individually or in combination transform invention into a patent-eligible invention, it could be patented.
Similar to EPO, technical application.
Claim construction hierarchy of interpretative sources
Primary importance (intrinsic evidence)
- Patent Claims
- Specification
- Prosecution history
Filling history, US thinks its important to see how patent was prosecuted, not in the UK.
Secondary importance:
- Expert and inventor testimony
- Dictionaries and treatises
Claim terms must be given their ordinary and customary meaning as understood by one of the ordinary skill in the art
Equivalents
Insubstantial differences are not enough to avoid infringement. Does a cone infringe an octagonal prism? - yes
Equivalent at priority - if only screws invented not tape, equivalent is nails.
Triple identity test for infringement - Warner-Jenkinson v Hilton Davis (1997)
Does the element of the accused invention perform:
- Substantially the same function
- In substantially the same way
- To achieve the same result
Prosecution file estoppel
If you made a change during prosecution, then it is assumed then cannot argue the opposite to the court.
Public dedication rule
Where something is disclosed in the patent but not claimed it cannot be an equivalent
Acts constituting infringement
Same as UK. Makes, uses, offers to sell, imports within the US during the term of the patent.
Indirect infringement
Whoever actively induces infringement of a patent shall be liable as an infringer
Prior use rights
Defence for infringement. The prior user has to be using in good faith (bona fide) when the grace period starts. Must have been commercially used.
Must have occurred at least 1 year before earlier between:
- The effective date of filling of the claimed invention or the date on which the claimed invention was disclosed to the public in a manner.
Pre-2012, this person would be entitled to the patent. Now defence to save them.
Other defences to infringement (not prior user rights)
Common Law experiment use
Statutory experimental use
First sale
Remedies
Damages (including triple damages for wilful infringement)
No account of profits
Injunction
US very big on punitive damages - thus settlement is very common.
Wilful infringement
Difficult to prove.
Main differences between UK and US
- Grace Period
- Public use doctrine
- Lack of excluded subject matter
