Patents Under U.S. Law © 2006 David W. Opderbeck

Patents -- Introduction Overview Overview –Protection: utility inventions, designs, asexually reproduced plants –Utility patent available for inventions that are new, useful and non-obvious –Protection is entirely dependent on the formalities – there is no patent protection without a patent document Why should this be so? Why should this be so? –Any making, using, selling or offering for sale of the patented invention protected; No need to prove copying, substantial similarity, or consumer confusion –Term of protection is limited: basically, 20 years from date of application

Patents Application Process Application Process –Patents are awarded to the first inventor –No work for hire doctrine –Application is filed and then Patent Office Examines it May reject for lack of novelty or utility or for obviousness – applicant permitted to amend May reject for lack of novelty or utility or for obviousness – applicant permitted to amend –All applications are published after 18 months pendency, unless the application is not subject to application in another country or under a multinational agreement requiring international publication and the applicant requests secrecy

Patent Number Date Issued Inventor Filing Date Patent Office Classification and Search Fields Prior Art References Cited During Examination Abstract

Background and Summary Specification Claims Independent Claim Dependent Claims

Drawing

Patents What can be patented: What can be patented: –Five questions: Is the invention patentable subject matter? Is the invention patentable subject matter? Is the invention new? Is the invention new? Is the invention useful? Is the invention useful? Is the invention non-obvious? Is the invention non-obvious? Was the application filed within one year of disclosure of the invention? Was the application filed within one year of disclosure of the invention? –Additional question post-application: was there sufficient disclosure of the invention in the patent document (written description and enablement requirements) Patent Act sec. 112 Patent Act sec. 112 Patent Act sec. 112 Patent Act sec. 112

Patents What can be patented – subject matter: What can be patented – subject matter: –Patent Act sec. 101: any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent, subject to the conditions and requirements of the law. Case law: Everything under the Sun that is made by man. Case law: Everything under the Sun that is made by man.

Patents Some Wacky Patents Some Wacky Patents –

Patents What can be patented – utility -- All that the law requires is that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word useful, therefore, is incorporated into the act in contradistinction to mischievous or immoral. What can be patented – utility -- All that the law requires is that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word useful, therefore, is incorporated into the act in contradistinction to mischievous or immoral. Patents dont have to be better – just different Patents dont have to be better – just different

Patents – Subject Matter – Novelty § Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title § Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title Note – a claimed invention fails under the novelty test only if a single prior art reference contains all the elements of the claimed invention (all elements rule) Note – a claimed invention fails under the novelty test only if a single prior art reference contains all the elements of the claimed invention (all elements rule) new

Patents – Nonobviousness and Originality § 103(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. § 103(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. obvious

Patents Note – a claimed invention fails under the obviousness test if it would have been obvious to a person of ordinary skill in the pertinent art at the time the invention was made. Under obviousness, different prior art references can be combined if there is some suggestion in the prior art, or in the general knowledge within the relevant art, to combine such references Note – a claimed invention fails under the obviousness test if it would have been obvious to a person of ordinary skill in the pertinent art at the time the invention was made. Under obviousness, different prior art references can be combined if there is some suggestion in the prior art, or in the general knowledge within the relevant art, to combine such references

Prior Art for Novelty and Obviousness 102(a) – knowledge or use of the invention by others in the United States, or publication or patenting anywhere in the world 102(a) – knowledge or use of the invention by others in the United States, or publication or patenting anywhere in the world 102(e) – disclosures contained in an application for a U.S. Patent that is either published or matures into a patent (Note – does not cover what is claimed, rather covers matters not claimed but that are disclosed – if claims are the same, an interference is declared) 102(e) – disclosures contained in an application for a U.S. Patent that is either published or matures into a patent (Note – does not cover what is claimed, rather covers matters not claimed but that are disclosed – if claims are the same, an interference is declared) 102(f) – derivation from another 102(f) – derivation from another 102(g) – another person in the U.S. first invented the invention and has not abandoned suppressed or concealed it 102(g) – another person in the U.S. first invented the invention and has not abandoned suppressed or concealed it

Patents – Nonobviousness and Originality – Graham Case Facts: Facts: –Patent for device that absorbs shock from plow shanks –811 (earlier) patent – shank placed on upper side of hinge plate; wobble problems and restricted flexibility –798 (later) patent – shank is on lower side of hinge plate; allows shank to flex along entire length

Patents – Nonobviousness and Originality – Graham Case –Obviousness scope and content of prior art are to be determined; differences between prior art and claims at issue are to be ascertained; level of ordinary skill in the pertinent art is to be resolved. scope and content of prior art are to be determined; differences between prior art and claims at issue are to be ascertained; level of ordinary skill in the pertinent art is to be resolved. Secondary considerations: commercial success, long felt but unsolved needs, failure of others, acquiescence of others to the patent Secondary considerations: commercial success, long felt but unsolved needs, failure of others, acquiescence of others to the patent

Patents – Nonobviousness and Originality – Graham Case Analysis (contd) Analysis (contd) –Obvious to a person of ordinary skill in the art to move the shank to the position below the hinge plate in order to increase flexibility – this was the only other logical place to put the shank

Patents – Statutory Bars §102(b) – the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States §102(b) – the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States 102(c) – he has abandoned the invention 102(c) – he has abandoned the invention 102(d) – the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States 102(d) – the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States

Patents – Statutory Bars – UMC Case Patent No. 3,643,513 Patent No. 3,643,513 Patent No. 3,643,513 Patent No. 3,643,513 Timeline: Timeline: –Patent app. Filed August 1, 1968 – therefore, critical date is August 1, 1967 –1966 – UMC employee Preston Weaver designs accelerometer in response to request from Navy –Late 1966 – UMC awarded accelerometer contract –Early 1967 – UMC determines Weaver accelerometer will not meet Milspec because it uses electromechanical transducer that cannot distinguish between acceleration from in-flight maneuvers and acceleration from other sources such as wind gusts –April-May 1967 Weaver conceives of accelerometer with analog transducer and built and tested engineering prototype of the sensor –May 1967 – Navy issues new Milspec and RFP for accelerometers –July 27, 1967 – UMC responds to RFP, represents that sensor portion has been constructed and tested; but complete accelerometer using the sensor not yet constructed –August 1, 1967 – Critical Date –August 2, 1967 – UMC submits detailed technical proposal to Navy –August 9, 1967 – UMC demonstrates complete device to Navy –Early 1968 – July 1968 – Navy cancels request to UMC and buys analog accelerometers from a UMC competitor

Patents – Statutory Bars – UMC Case Issue: is there an on-sale bar if the invention was not fully reduced to practice at the time it is made available for sale? Issue: is there an on-sale bar if the invention was not fully reduced to practice at the time it is made available for sale? –Generally, invention involves two steps: conception (the mental step) and reduction to practice (constructing the invention in a working form; or filing a patent application – constructive reduction to practice)

Patents – Statutory Bars – UMC Case Policies behind on-sale bar Policies behind on-sale bar –Dont remove inventions from public which the public has justifiably come to believe are freely available –Prompt and widespread disclosure of new inventions –Prevent effective extension of patent term –Reasonable time for inventor to determine whether a patent is worthwhile Note – this is different than most foreign jurisdictions, which require absolute novelty – no use or disclosure prior to the patent application Note – this is different than most foreign jurisdictions, which require absolute novelty – no use or disclosure prior to the patent application

Patents – Statutory Bars – UMC Case Holding: given the policies behind the bar, a complete embodiment of the invention is not required to trigger the bar Holding: given the policies behind the bar, a complete embodiment of the invention is not required to trigger the bar Marketing a mere conception will not trigger the bar, but where, as here, all the essential elements of the invention exist and are subject to a sale proposal prior to the critical date, the bar applies Marketing a mere conception will not trigger the bar, but where, as here, all the essential elements of the invention exist and are subject to a sale proposal prior to the critical date, the bar applies

Design Patents – Black & Decker Case Design Patent D 272,476 Design Patent D 272,476272,476 Test for infringement – if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other. Test for infringement – if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other. The accused device must appropriate the novelty in the patented device which distinguishes it from the prior art. The accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.

Plant Patents – Yoder Bros. Case Requirements for validity: Requirements for validity: –New, distinct, non-obvious, asexually reproduced Novelty: the plant literally has not existed before; not a plant that existed in nature but has been newly discovered Novelty: the plant literally has not existed before; not a plant that existed in nature but has been newly discovered Distinct: characteristics clearly distinguishable from existing varieties (replaces the requirement of utility) Distinct: characteristics clearly distinguishable from existing varieties (replaces the requirement of utility) Nonobvious: examine Nonobvious: examine –Characteristics of prior plants of the same general type, both patented and nonpatented –Differences between prior plants and the claims at issue How much of an improvement does the new plant represent? How much of an improvement does the new plant represent? Asexual reproduction (a new requirement that is introduced for plant patents) Asexual reproduction (a new requirement that is introduced for plant patents)