Intellectual Property Boston College Law School February 25, 2008 Patent - Utility

Requirements (1) Patentable Subject Matter (2) Novelty (3) Utility (4) Nonobviousness (5) Enablement

Utility General Utility Specific Utility Moral Utility

Utility?

Enablement 35 U.S.C. § 112. Enablement –“The specification shall contain a written description of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms, as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Approval Process File application w/ PTO Review by PTO for patentability Back and forth between applicant and PTO Publication of some patent applications Issuance or rejection of patent Appeal to review board, CAFC Reexamination procedure

Sample Patent

Edison Sawyer & Man claim –(1) An incandescing conductor for an electric lamp, of carbonized fibrous or textile material …

Administrative Next Assignment –Finish IV.B.3 – Enablement –Start IV.B.4 – Novelty Through “Note on Inherency Doctrine” and “Problem”