Patents I Introduction to Patent Law Class Notes: February 19, 2003 Law 507 | Intellectual Property | Spring 2003 Professor Wagner

2/19/032Law 507 | Spring 2003 Today’s Agenda 1.Introduction to Patent Law a)Brief History b)The Structure of the US Patent System What is a patent? The patent prosecution process Patent litigation & the federal circuit c)Theories of Patent Law

2/19/033Law 507 | Spring 2003 History of the US Patent System Article I, § 8, cl. 8: [to] promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive right to their respective Writings and Discoveries. Patent Statute: 35 U.S.C. et seq. Since 1790 Most recently re-enacted in 1952 (“The ‘52 Act”)

2/19/034Law 507 | Spring 2003 The Structure of a US Patent US Patent No. 6,203,230 1.Specification a)Front page b)Abstract c)Written Description 1)Description of Technical Field 2)Background of the Invention 3)Summary of the Invention 4)Detailed Description of the Invention 2.Drawings 3.Claims

2/19/035Law 507 | Spring 2003 The Structure of the US Patent System Two Distinct Phases 1.Prosecution Phase (also: Examination) Administrative Agency (USPTO) End: an “Issued Patent” (enables enforcement phase) 2.Enforcement Phase Private actions (civil suits, enforced by patentees) Litigation under federal law oWhere? 28 U.S.C. § 1338; 28 U.S.C. § 1295 Appeals to the the Federal Circuit

2/19/036Law 507 | Spring 2003 The Life of a US Patent

2/19/037Law 507 | Spring 2003 The Requirements for Patentability A valid patent must be... 1.Fully disclosed (§ 112) (Feb. 21) 2.Not subject to a statutory bar (§ 102) (Feb. 26) 3.Novel (§ 102) (Feb. 26) 4.Nonobvious (§ 103) (Feb. 28) Validity analysis: 1.During prosecution phase (by USPTO ‘Examiners’) 2.During enforcement phase - defense to infringement (by Courts) … but, ‘presumption of validity’

2/19/038Law 507 | Spring 2003 Patent Prosecution Basics Key Points about Prosecution 1.Ex parte process 2.Private/secret (for 24 months) 3.Procedures allow “continuing” applications a)Around 90% of all applications eventually result in a patent b)Internal procedural incentives to issue patents 4.Two-stage appeals 1.Board Patent Appeals and Interferences (Board) 2.Federal Circuit (also: District DC + Fed. Cir.) 5.Reexamination (ex parte, inter-partes)

2/19/039Law 507 | Spring 2003 The Federal Circuit 1.Mandatory location of all appeals involving cases “arising under” the patent laws. 2.Also, appeals from denials of patent applications by the USPTO. Result: oNationwide jurisdiction oAdministrative oversight Why structure the patent system this way? Will it really reduce forum shopping? Is there some other theory at work? oIf so, what does this imply about the Federal Circuit’s mandate?

2/19/0310Law 507 | Spring 2003 Patent Theories Why do you think the patent law is generally considered the most utilitarian of the IP regimes? If the patent law is all about incentives, then consider what incentives the patent law creates? 1.Invention 2.Disclosure 3.Commercialization 4.Investment in R&D 5.Design-Around What are the costs of granting patents?

2/19/0311Law 507 | Spring 2003 Patent Theories Why not simply subsidize invention/innovation directly? 1.Government-sponsorship of research 2.Cash rewards for inventive activity Won’t these schemes create the same incentives, with less of the costs ?

2/19/0312Law 507 | Spring 2003 Next Class Patents II Disclosure Requirements