Ch. 7 Patent

Special Areas of Patent Law

1. Plant patents 2. Design patents 3. Patents for Products of Nature 4. Patents for Abstract Ideas

Triple Identity Test

1. Same Function 2. Same Way 3. Same Result

Four Element Test for Non-Obviousness (Graham Factors)

1. Scope & content of the prior art 2. Difference between claimed invention & the prior act 3. Level of ordinary skill in the prior art resolved 4. Objective evidence of non-obviousness.

Literal Infringement

Accused device is clearly inside the boundaries of the properly-interpreted claim -Occurs when accused technology embodies each and every limitation of the claims Burden of proof for literal infringement: every element of a claim must be present in the infringing product.

The Doctrine of Equivalents

Accused device is outside the literal boundaries of the claim ("non-textual infringement") Judge-made Doctrine.

Product of Nature Doctrine

Addresses the difference between discovery & invention. Discovery of an "inherent property" versus "invention" or a new use of a natural product.

Exception to Section 102

"Experiment" Carve Out City of Elizabeth v. Pavement Co.

Utility

"Specific, credible, and substantial."

What is excluded from Patentable Subject Matter?

"laws of nature, natural phenomena, and abstract ideas" are NOT patentable.

How to test: To be a substantial equivalent,

"the elements substituted in the accused device for the element... in the claim must not be such as would substantially change the way in which the function of the claimed invention is performed".

How to approach item that may not be patentable subject matter:

(1) Look closely at what it is doing (2) Look closely at how it was invented *Must be a sort of innovative leap

Not "NEW" if

(a) the invention 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, or (b) the invention was 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

Why Moral/beneficial Utility has been abandoned

* Do not want judges to be making moral evaluations and interpretations * Risk that people's inventions might be misconstrued * Additionally, it would be a slippery slope to screen out some technologies just because one use might be immoral (could be used for other things; the technology itself is neutral)

Utility-Timing Trade Off

**Grant property right to person too early = they create the market (everyone has to go through them, which creates a bottleneck) o But everyone gets benefit (patent as mining rights) ** Not giving property right early enough = counterproductive effect (reducing incentives of those who do the work slows down scientific process) o People hold onto innovation/keep secrets longer

What is the Utility/What does it do?

**Just saying "similar compound did ___, so ours is likely to do that too" is NOT ENOUGH **Standard: Specific Benefit -Hard for courts to judge general benefit -Quid pro quo: if you don't tell specifics, you don't get property right -Patents for broad inventions with general use = granting monopoly in that field

Reasoning for Prior Public use Exemptions

**Want to encourage early patent filing **Applicant will likely argue that any alleged prior use/knowledge was NOT known or used enough to preempt their patent -Usually need some kind of documentation; high burden of proof -Oral evidence not enough

Issues with biotech cases:

*Almost everything is non-obvious; therefore there are very lax requirements for biotech patents -BUT, in response, they are required to be much more specific in regards to utility (much higher burden of proof) · CANNOT patent "frivolous inventions"

5) Composition of Matter (Type of Product)

*Combination of things - finding new substance from found materials

Policy Reasons behind Novelty Requirement

*Don't want to give monopoly to someone for something already out there *Statutory bars create incentive to act rapidly (speeding up disclosure)

3) Machine (Type of Product)

*Inventive thing that does something Limitation: if simply captures a general or abstract process

4) Manufacture (Type of Product)

*Non-natural, human-made structure Exception: Printed Material

2) Process (means)

*Way to make physical entity *Getting somewhere inventive OR inventive way of getting to something already known

4.) Patents for Abstract Ideas

-Can patent specific application of idea, but not the idea itself (even if idea is novel, useful and non-obvious) -Policy: too much monopoly power if you protect ideas themselves -Exception: An idea in and of itself is NOT patentable, but a new device by which it may be made practically useful is.

Challenging a Patent

-Challenge the validity of patent being granted by PTO -Public right to request of re-exam to PTO -Request to fed. court for declaratory judgments (Must be a controversy, and must be a competitor who seeks to use that technology that was claimed.)

Patent Misuse

-Violation of the antitrust laws. -Opportunistic behavior.

1.) Scope and content of the prior art

-What prior art is "pertinent: and "analogous" -Test is functional (field), not commercial (area) -Example: sound proofing rehearsal space How: -Applicants -PTO cites references

Non-obvious Continued

-Innovative Leap" required // Minimum degree of inventiveness o Upgrade is not innovative o Change in market conditions is not innovative leap (i.e. porcelain doorknobs) o Who are judges to assess what is "innovative" · Higher threshold than copyright o Covers independent development o Covers all possible uses of patented product

2.) Design Patents

-New, original, ornamental design or article of manufacture -No utility - ornamental -Novelty: "ordinary observer" test -Non-obviousness: to designed with ordinary skill in the relevant art or "ordinary designer" (disagreement over this) -Not if design is exclusively functional -BUT both utility and design can co-exist if separable

Non-Obviousness

-Not obvious to a skilled person in the relevant art. -Does not matter the manner in which it is made.

1.) Plant Patents

-Novelty, distinctiveness, non-obvious -Must be discovered in a cultivated state (not in the wild) -Protects only new & distinct varieties of asexually reproducing plants (not seeds) -Exclusive right to reproduce the plants

Implications after Diamond v. Chakrabarty

-PTO takes a step back -Judicial deference but default becomes expansion -Congress must act to restrict expansion (does not happen -End result: no subject-matter boundaries

3.) Patents for Products of Nature

-Process claims are approved; provides protection on the process not the product produced -No protection for discovery of previously unknown plants or animals -Potential protection for "new" plants, animals, bacteria -Role of human intervention will be decisive EXCEPTIONS: Cannot patent living organisms Cannot patent things that are naturally occurring in nature

2.) Differences between claimed invention & the prior art

-Reconstruction of prior art (before invention) -Danger: hindsight bias Test: would someone in the prior art read the very teachings of the invention at issue (Graham)

Types of Utility

1. General 2. Specific 3. Moral/Beneficial

Patent Infringement - 2 Step Analysis

1. Interpretation of the claim 2. Compare the claim to the accused device.

Four Part General Equity Test

1. Irreparable Injury 2. Monetary damages are inadequate 3. Consideration of hardships 4. Injunction would not disservice the public.

Patent protection is stricter than other IPL because:

1.) Covers independent creation 2.) Covers all possible uses of the patented product 3.) Valuable novelties often arise due to changes in needs, conditions and technology that are not fairly attributable to the creativity of the first person to make the novelty.

Rights of the patent holder (1)

1.) Exclusive right to use, make, offer, & sell the patented item. -Exclusion: may not be able to use the invention as a whole if it conflicts with other claims.

Defenses to Patent Infringement

1.) Experimental Use 2.) Inequitable Conduct 3.) Patent Misuse

Alternatives to Patents

1.) Government Funded Model 2.) Trade Secrets

Problems with permanent injunctions

1.) If injx became the norm, it would all come down to bargaining; would be hard to determine and also brings up the attribution bias issue 2.) Routinely granted in patent infringement cases, but no clear test.

Types of Patent Infringement

1.) Literal infringement 2.) The doctrine of equivalents 3.) Reverse equivalents 4.) Means plus function claims 5.) Contributory infringement

Patentable Subject Matter must be

1.) New 2.) Useful 3.) Process, machine, manufacture or composition of matter.

Two elements of Patent Law

1.) Non-obviousness 2.) Information paradox

Patentability Requirements

1.) Patentable subject-matter 2.) Utility 3.) Novelty 4.) Non-obvious 5.) Enablement (SUNNE)

Patentable subject matter [for a Utility Patent] is a...

1.) Product (end) 2) Process (means) 3) Machine (Type of Product) 4) Manufacture (Type of Product) 5) Composition of Matter (Type of Product)

Tests of Doctrine of Equivalents

1.) Triple Identity Test 2.) All Elements Rule

Rights of the patent holder (2)

2.) After 20 years (patent expires): -Under certain conditions, can add 5 extra years -OR, even more if due to the PTO

Rights of the Patent Holder (3)

3.) No duty to work the patent 4.) No duty to license (BUT there are antitrust restrictions) 5.) If infringement occurs, holder may enjoin use by others.

All Elements Rule

Analysis of the role played by each element plays a role in the inquiry as to whether a substitute element matches the function, way, and result of the claimed element. Accused product /process ii. Must contain elements iii. Identical/equivalent to iv. Each claimed element

4.) Objective evidence of non-obviousness

Commercial success, long-felt need, failure of others, copying, unexpected results

Claim Interpretation

Every word in claim construction is a big deal and tightly interpreted. (See KKR outline)

(T/F) the proper question is whether the differences between the prior art and the claims would have been obvious to one of ordinary skill in the art.

False. the proper question is whether the invention as a whole, not just the differences, would have been obvious. See 2141.02 under "claimed invention as a whole must be considered".

Remedies under Patent Law

Injunctions (Property rule) Damages (Liability rule) Costs of each respective remedy: Property rule: hold out problems, strategic behavior Damage rule: valuation problem (over or under-compensation)

Government Funded Model

Innovation for public property with public investments. Downside: sort of biased towards monetary payoffs (determined by the govt)

DNA?

Lots of processes to discover strands, useful in curing illness, lots of money required for research & development

Trade Secrets

Maintain Exclusive Control. Downside: innovation remains hidden.

Novelty

New: not known/used by others, or patented/described in a printed publication (in this OR another country)

Visibility

Openly is also when done underground (drilling in Vermeer) if not a secret use (Gore); also if only visible to workmen who would need to destruct it in order to see the innovation (burglar-proof safe designs in Hall v. McNeale, CB 231).

Priority General Rule (Past v. Present)

Past: First to conceive has priority Now: It is only about who FILED first. ** A public use or sale ANYWHERE in the world is now sufficient to render a patent useless. **You can disclose something & you are safe as long as you file for the patent application WITHIN a year; will NOT become prior art unless this time has passed and you still have not filed.

Why is there a N-O threshold?

Patent protection > (c) protection -covers independent creation -covers all possible uses of the patented product -Valuable novelties often arise due to changes in needs, conditions and technology that are not fairly attributable to the creativity of the first person to make the novelty (doorknob)

1.) Product (end)

Physical entities

Events of Anticipation (actions of others prior to the date of invention)

Prior patent / Printed publication Knowledge / Unconcealed invention by others Use by others Previously filed and eventually granted application Prior Patent or Printed Publication: prior to claim of invention (foreign)

Pros/Cons of Narrow Patent Protection

Pros: less conflict over boundaries Cons: less incentives for broad innovation.

Pros/Cons of Broad Patent protection

Pros: maximizes incentives to innovate. Cons: maximizes amount of conflict over boundaries; bad for follow up innovation

Actions of others prior to the date of invention (requirement / test / exception)

Requirement: "substantial identity": needs to be substantially the same Test: whether the invention has been disclosed to enable a person skilled in the applicable art to duplicate the product or process Exception: public use: no patent if the public use discloses the benefits of the invention

In re Hall

Test for "public accessibility": proponents of the bar must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation

For this 3rd factor, we want the ordinary inventor to be more or less skilled?

The more skilled we make the ordinary inventor, the more likely it is to be obvious.

5.) Enablement

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.

"Machine or Transformation Test

To determine whether something is patent-eligible subject matter." 1.) It is tied to a particular machine or apparatus, OR 2.) It transforms a particular article into a different state/thing

Why are patents needed?

Without property rights there would be sub-optimal investments. Solution: Time-limited property rights.

Patent Law is different from copyright and trademark because

a.) Must be an innovative leap; something you did that others did not think of. b.) Must be the first to file it, but must also be something special c.) Patent application is valuable regardless of commercialization.

Specific Utility

invention must actually perform the function

Moral/Beneficial

not patentable if it is "poison, promotes debauchery, or facilitates private assassination" (has been pretty much abandoned completely)

Experimental use

o Constructed machine for philosophical experiments, ascertaining sufficiency of machine (totally unrelated to commercial) Read very narrowly and on a case-by-case basis in regards to how much research can be done without selling it.

In re Bayer

phD thesis that had not been cataloged or placed on library shelves, and that was only known to the three faculty members who served on the thesis committee, did not qualify as a printed publication

Non-obviousness

regarded from the perspective of someone who is trained in the field. Not easy because there is hindsight bias; must look at circumstantial evidence for innovative leap.

General Utility

requirement of functionality (always some use, even if silly)

Something is obvious if...

the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.

Information paradox

when you have a great idea and you need funding, you must share in order to attract funding. -NDA's and confident. agreements are important. -Once you test something out in public, it is no longer novel and you can't easily get patent protection.

-In public " use" or for sale in this country more than ONE YEAR prior to the date of application

§ "Use" --> used by someone else and done openly in the course of commercial operations (reduced to practice) § "Visible" or "open" --> can still be considered present if it is underground or concealed, or only visible to workmen

Zone of equivalents depends on degree of advancement. Elaborate.

§ Pioneering invention = broad scope of equivalents § Small improvement = narrow scope/weaker patent