INTRODUCTION
Patent Policy: patent law seeks to reward the creator of a useful thing, in hopes that society will yield more useful things.
Constitution, Article I, Section 8: authorized Congress "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 Structure: has a specification which discloses a written description of the invention, the manner and process of using it (enablement), and the best mode to carry out the invention. The claims of a patent are the most important part, which defines the patentee's rights.
Right to Exclude: patents give an inventor the right to exclude others from using or selling the invention. The 3 types of patents include utility, design, and plant patents.
International Law: TRIPS made uniform rules for IP protection. New rule is that protection runs 20 years from the date of application.
PATENTABLE SUBJECT MATTER
§101: "Whoever 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…"
What is patentable: "anything new under the sun that is made by man." Diamond.
Laws of Nature and Abstract Ideas: prohibited categories of patents include: phenomena of nature, mental processes, abstract intellectual concepts, a principle or fundamental truth, or an idea of itself.
Algorithms: a practical application of a mathematical algorithm, formula, or calculation that produces a useful, concrete, and tangible result is patentable. State Street.
UTILITY § 101
§101: requires usefulness (utility) to receive patent protection. The minimum threshold is that the invention has to do something. There are three major issues concerning utility: practical or specific utility (actual), beneficial utility (to society), and operability (invention does what claim says it will do).
Low Threshold Requirement: "All that the law requires is that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society." Lowell.
Identifiable Benefit: The threshold of utility is not high; all it has to do is provide some identifiable benefit.
DISCLOSURE / ENABLEMENT § 112
§112 Disclosure: "The specification shall contain a written description of the invention, and of the manner and process of making and using it…"
Adequate Disclosure Requirements:
(1) enablement, (2) written description,
(3) definiteness of claims, and (4) best mode.
ENABLEMENT
Enablement: requires that the specification teach those with ordinary skill in the art to make & use invention w/out undue experimentation.
Undue Experimentation: the description is vague and uncertain so that no one can tell, except by independent experiments, how to construct the patented device. Voids patent.
Undue Breadth: the scope of enablement must be at least roughly commensurate with the scope of the claims. i.e. don't claim too much.
Scope of Enablement: what is disclosed in the specification plus what would be known to one of ordinary skill in the art without undue experimentation.
Timing for Enablement: inventors are required to establish enablement for their claims as of the date that the application is filed.
WRITTEN DESCRIPTION
Purpose: to recognize what invention is claimed and to show that the inventor had possession of the invention at the date of application.
Chemicals & DNA: require a more precise description, such as structure, formula, etc.
Drawings Alone: may be sufficient to satisfy this requirement, so long as one skilled in the art can use it. Used mostly in design patents.
DEFINITENESS OF CLAIMS
Policy: puts limits on what is protected. People will know what they can safely use. Provides the "meets and bounds" of patent protection.
Definite-Enough Test: whether one skilled in the art would understand what is claimed when the claim is read in light of the specification. Compliance is a question of law.
Reading Limitations into Claim: if the language in the claim is clear, then don't read in from the specs. If language is unclear, look at the specification for limitations.
Vague Terms: will render a patent invalid; preventable by defining all terms in specs and then use consistently. (e.g. partially vs. slightly)
BEST MODE
§112: "the specification shall set forth the best mode [BM] contemplated by the inventor of carrying out his invention."
Policy: against selfishness. If inventor knows the best way to use the invention, he should not conceal it and require the public to hunt for it.
No Updating: one may not change the BM.
NOVELTY § 102
§102: requires something new in order to get patent protection (a quid pro quo for society).
Prior Art: anything in existence before the date of invention (also called a "reference"). The affect of a reference may lead to an anticipation of the current invention.
Anticipation: that which infringes, if later, would anticipate if earlier.
Identity Requirement: an invention is not anticipated unless a single piece of prior art (a single reference) discloses (expressly or inherently) the identical (every element) invention.
Accidental/Unknown Anticipations: do not count as anticipations because they give nothing to the world. The inventor is still protected.
Enabled Reference Requirement: a prior art reference cannot anticipate unless the reference is enabling (adequate directions w/in 4 corners).
Structure/Product Patents: scope is broad, covering even unforeseen uses. This broad protection implies broad anticipation.
New Use (Process) Patents: under §100(b), new use patents are called process patents.
§102(a) – Known / Used by Others
§102(a): "No patent if, before the date of invention, the invention was known or used by others in this country or if, before the date of invention, the invention was patented or described in a printed publication anywhere."
Corroboration Rule: says you can't have oral testimony of a prior art; must have exhibit.
Used By Others: needs to be open (not secret) and in the ordinary course of activities.
Global Inquiry: looks at printed publications and foreign patents. (e.g. Internet descriptions)
Global Date of Publication: a publication becomes public when it becomes available to at least one member of the general public (publisher not a member of the general public).
Secret Foreign Patents: do not bar inventors in the U.S. Patent must be available to the public.
§ 102(e) – Secret Prior Art
Function: permits publicly available material to be backdated to a time prior to public disclosure (i.e. fiction that patent issued on filing date).
Applications Can Anticipate: because the first to apply is giving the best evidence of first to invent. Application must be granted for the rule to "kick in" and become effective.
§ 102(f) – Derivation from Another
Rule: no one is entitled to a patent if the invention was derived from someone else's work. One must be the inventor (the one who conceived) to get a patent on the invention.
Shop Rights: exist in the employer of an employee-inventor.
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