1. The Patent Document II Class Notes: January 23, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

2. 1/23/032Law 677 | Spring 2003 Today’s Agenda 1.The Best Mode Requirement 2.Looking at disclosure & complex technology 3.Inventorship

3. 1/23/033Law 677 | Spring 2003 The Standards for Patentability A valid patent must be... Fully and appropriately described (§ 112) Fully and appropriately described (§ 112) In compliance with statutory bars (§ 102) Novel (§ 102) Nonobvious (§ 103) The work of the inventors (§ 116) Useful (§ 101) Within the appropriate subject matter (§ 101)

4. 1/23/034Law 677 | Spring 2003 The Best Mode Requirement 35 U.S.C. § 112. - Specification 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....

5. 1/23/035Law 677 | Spring 2003 The Best Mode Requirement The Components of the Best Mode Analysis 1.Subjective component: Did the inventor have a best mode of making the invention? 2.Objective component: If #1 is true, then consider whether the disclosure is sufficient? What is the standard for disclosure quality?

6. 1/23/036Law 677 | Spring 2003 The Best Mode Requirement Glaxo v Novopharm (Fed. Cir. 1995) (Rich, J.) oSubjective component? oObjective component? Why allow Glaxo to play ‘shell games’?

7. 1/23/037Law 677 | Spring 2003 The Best Mode Requirement Great Northern v Henry Molded Products (Fed. Cir. 1996) (Clevenger, J.) H’s ‘314 patent does not disclose ‘diamond’ indentations in a molded pulp roll support Consider: H’s argument oWhy not require disclosure of “production details”? (What are they?) oWhy not require disclosure of “routine details”?

8. 1/23/038Law 677 | Spring 2003 The Best Mode Requirement Some Best Mode Hypotheticals 1.You (the inventor) select a mode by chance or convenience. Must you disclose? 2.You select a mode because it makes the invention easier/cheaper to produce. Must you disclose? 3.Assume you mistakenly or inadvertently fail to disclose the best mode. Problem? 4.Assume you work on a research team: a)A (noninventor) colleague determines a better mode than you do, and tells you before filing. b)A (noninventor) colleague determines a better mode than you do, but does not tell you before filing.

9. 1/23/039Law 677 | Spring 2003 The Best Mode Requirement Key Issue: Best Mode vs. the Claim Language 1.Engel v Lockformer: method of crimping corners for invention of corner attachments for ducts Unclaimed No best mode violation 2.Great Northern: diamond-shaped indents Unclaimed Best mode violation 3.Northern Telecom: way of operating method to get fine lines (invention: silicon etching) Unclaimed No best mode violation

10. 1/23/0310Law 677 | Spring 2003 Disclosure & Complex Technology Northern Telecom v Datapoint (Fed Cir 1990) (pc) Why was the cassette tape issue easy for Best Mode? (Consider: Newman’s dissent.) The invention requires software to run. Does that software need to be disclosed? Fonar v General Electric (Fed Cir 1997) (Lourie, J.) Note the ‘general rule’: this has been suggested to be the death of the software industry. Agree? (Should the court have stated it another way?) Note that Lourie wrote most of the biotech/chemical written description cases. Anything ironic about his views here? (Note that Judge Lourie has a PhD in Chemistry.)

11. 1/23/0311Law 677 | Spring 2003 Inventorship 35 U.S.C. § 116. - Inventors When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.

12. 1/23/0312Law 677 | Spring 2003 Inventorship Hypo: Patent ‘123 has 120 claims. A is the sole worker on 119 claims; B suggests an improvement that makes it as Claim 120. Who owns the patent? B grants an exclusive license to Company X to the ‘123 patent, and keeps the $$ for herself. Problem?

13. 1/23/0313Law 677 | Spring 2003 Inventorship Hypo 2: Patent ‘123 was filed without naming Inventor B. 1.What needs to happen? How does it work? o35 USC 116 (PTO can fix); 35 USC 256 (Court can fix) 2.Company X, charged with infringement, gets a license from B. What happens? See Ethicon, p. 486. 3.Assume A deliberately filed without B’s knowledge. What happens? 35 USC 116/256: … whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Commissioner may permit the application to be amended accordingly, under such terms as he prescribes.

14. 1/23/0314Law 677 | Spring 2003 Next Class Loss of Right Provisions Loss of Right Provisions Prior Public Use Experimental Use On-Sale Bar Third-Party Activity