Intellectual Property Boston College Law School February 26, 2009 Patent – Defenses

Infringement 35 U.S.C. § 271 –“(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

Doctrine of Equivalents Tests –Substantially same function, way, result –Insubstantial differences Evidence –Circumstances, purpose, prior art –Would PHOSITA have viewed interchangeable? Details –All-elements rule –Measured at time of infringement

Doctrine of Equivalents Limitations –Claim on prior art –Prosecution history estoppel –Disclosed but not claimed

Problem 3-11 “1. A pocket toothbrush having an exterior structure resembling a traditional fountain pen case comprising –a. a removable cylindrical end cap cover, –b. a main cylindrical body shaft over at least one end of which said end cap cover fits …, –c. said cylindrical body shaft having one end which contains toothbrush bristles …, –d. said cylindrical body shaft including an interior passage extending into said bristle end and having at least one termination opening in the area at the base of said bristles, –e. a movable plunger extending into said cylindrical body shaft in said main cylindrical body shaft, –f. said body shaft including an interior space for the accommodation of a charge of toothpaste to be fed to said bristles by operation of said movable plunger …”

Toothbrushes

Means Plus Function Claims 35 U.S.C. 112 –“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Contributory Infringement Elements –(1) Sale of a product –(2) Material part of patented invention/process –(3) Knowledge –(4) Specially made or adapted for infr. use –(5) Not a staple article of commerce –(6) No substantial non-infringing use

Foreign Activity 35 U.S.C. 271(f)(1) –“Whoever … supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention … in such manner as to actively induce the combination of such components outside the United States …shall be liable.”

Defenses Defenses to infringement action –Experimental Use –Inequitable Conduct –Patent Misuse

Patent Misuse Types of activity implicating patent misuse –Extension beyond patent term (impermissible) –Tying to staple article (impermissible) –Tying to non-staple article (permissible) –Non-metered licenses (impermissible) –Grant-back clauses (permissible) –Field of use restrictions (permissible, ususally) –Patent suppression (permissible)

International Patent Law Governed by each country’s domestic patent laws Major differences –Most have first to file systems –No one-year grace period after public use,... –Most permit prior users rights

Treaties Paris Convention –Once file in a member country, get priority date –Have one year to file in other country –Shielded from consequences of publication, etc. Patent Cooperation Treaty –File separate document with domestic agency –Gives additional 20 months to file –Up to 30 months if file earlier

Substantive Minima GATT-TRIPS imposes certain minima –Cover all important commercial fields –Test patents for inventive step, application –Include right to control imports –Curtail use of compulsory licenses Changes in U.S. law –Patent term now 20 years from application –Open up first to invent to foreign inventors –Provide for provisional applications –Publication after 18 months of filing, for patent applications that are also filed overseas

Administrative Assignment for next class –Read through V.B.1 – Copyright – Scope Schedule adjustments –Wednesday, March 11 (will reschedule) –Monday, March 16 (cancelled)