© 2008 International Intellectual Property June 16, 2009 Class 2 Introduction to Patents

© 2008 Major Types of Intellectual Property Patents Copyrights Design Protection Trade Secrets Trademarks

Patents Patent –Set of legal rights granted to an inventor of a product or process What’s protected? –An invention that New (or “novel”) Involves an Inventive Step (or “non-obvious”) Capable of Industrial Application (or “useful”) Enabled What’s not protected? –Laws of nature, physical phenomena, abstract ideas © 2008

Patents How do you get a patent? –Apply to the patent office –Meet certain requirements How long does a patent last? –20 years from filing of the application (minimum term under TRIPS Agreement) Rights of others –No independent discovery –Only if licensed © 2008

Purpose of Patent System Patents serve 3 main purposes: 1.Stimulate inventive activity 2.Encourage commercialization of inventions 3.Disseminate technical information Enablement requirement Inventor must disclose the invention in sufficient detail to allow a PHOSITA to practice the invention without undue experimentation © 2008

Patents – Discovery and Invention Discovery vs. Invention –Discoveries of properties of nature are NOT patentable New mineral/plant E=mc²; law of gravity –But if a human intervenes to make use of or alter naturally-occurring phenomena, that is considered an “invention” and IS patentable © 2008

Diamond v. Chakrabarty 447 U.S. 303 (1980) U.S. Supreme Court held that Chakrabarty’s invention, a micro-organism, was patentable subject matter because: –The invention was a new, non-naturally occurring bacterium –The bacterium was different than anything found in nature and it had the potential for significant utility © 2008

Patentable Subject Matter Patentable subject matter very broad in U.S. –U.S. Patent Act provides that “[w]hoever 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 therefore….” Diamond v. Chakrabarty: subject matter must be broad because inventions are often unforeseeable and unpredictable Patentable subject matter not as broad in Canada –Harvard College v. Canada (Sup. Ct. of Canada 2002) Patent Act limits “invention” to “art, process, machine, manufacture or composition of matter” Patentable subject matter does not include higher life forms such as the OncoMouse © 2008

Patenting Human Genome Human Genome Project was completed in 2000 –Mapping of human chromosomes that turned genetic raw material into a powerful text to be read and interpreted The U.S. and European Union have determined that certain uses of naturally-occurring genetic code are patentable –E.g., genetic sequences used as the basis of testing for susceptibility to certain diseases such as breast cancer © 2008

New (or “novelty”) Requirement Invention must be new (or novel) meaning it has not been disclosed before the initial filing of the patent application (i.e., the priority date) –Cannot be “anticipated” by prior art –Jurisdictions differ as to the type of prior art required E.g., written vs. oral disclosure –Anticipating prior art usually can come from anywhere in the world, but there may be different requirements regarding “domestic” vs. “international” prior art © 2008

Novelty Requirement in U.S. Under U.S. law, an invention is not novel if it was –“known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent” –“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.” 35 U.S.C. § 102(a)-(b) © 2008

Motorola v. Agence Spatiale Européenne Facts: The EPO granted Motorola a patent on a satellite cellular system. Agence Spatiale challenged the patent on novelty grounds arguing that the invention was disclosed in a prior publication. Holding: The Technical Board of Appeals confirmed the revocation of Motorola’s patent for lack of novelty. The term “handing off” was not limited to a process that occurs exclusively within the satellites, and therefore the patented invention is not novel because it encompasses the previously-disclosed intra-satellite handing off process. © 2008

Inventive Step/Non-obviousness Inventive step or non-obviousness requirement is intended to limit patents to those inventions that have made a significant contribution to the development of new and useful technologies Patent Offices/Courts ask: –Was the invention “obvious” to a person reasonably skilled in the art? –E.g., Ballpoint pen example (p. 146) © 2008

Utility To be patentable, an invention must be useful or “capable of industrial application” –Inventor does not have to show commercial success Traditionally, this requirement was a non-issue because the inventor could almost always show some use for his invention Developments in biotechnology and chemistry have given rise to a number of “speculative” patent applications –Is the invention of a new compound that might be useful in the treatment of disease patentable? Should it be? © 2008