Patent

What are the ways that a patent applicant can respond to an objection?

1. Applicant may contest (traverse) the rejection 2. Applicant may abandon the application. 3. Applicant may file a continuation, which resets the examination process. 4. Applicant may amend the application 5. Appeal to the Patent Trial and Appeal Board

Regarding prosecution history estoppel in patent law, name two threshold rules for reaching the estoppel issue.

1. Claim amendments must surrender claim scope to trigger operation of the doctrine. 2. Arguments to examiners are treated differently than actual amendments.

What are the patent office guidelines for utility?

1. Credible 2. Specific 3. Substantial

When can inducement form the basis of patent infringement liability?

1. Direct infringement 2. Actively and knowingly inducing another's direct infringement.

Elements of contributory infringement in patent infringement suit.

1. Direct infringement 2. Article not suitable for substantial noninfringing use 3. Knowledge that the combination for which the component was designed is patented and infringing.

Name a few cannons of claim interpretation.

1. Lexicographer Rule 2. Disclaimer of Subject Matter 3. Claim Differentiation 4. Construing Claims to Preserve their Validity 5. Purpose or goal of the Invention 6. Narrow construction preferred

Name some factors a court will evaluate to determine whether a use of an invention is experimental.

1. Necessity for testing. 2. The amount and control over the experiment retained by the inventor. 3. The length of the test period. 4. Whether records were kept of the experiment 5. Whether testing was systematically performed.

What are the requirements of patentability?

1. Patentable subject matter 2. Novelty 3. Utility 4. Non-obviousness 5. Enablement

Under the 1952 Patent Act, what relevance did geography have to novelty and statutory bars?

1. Printed publications and patents in foreign countries were considered. 2. Public use or sale was only considered in the United States.

What two major constraints exist on the scope of patent claims?

1. Prior Art 2. Enablement (inventor can only patent what he discovered)

What is the Graham test for nonobviousness?

1. Scope and content of the prior art 2. Difference between the prior art and the claims at issue. 3. Level of ordinary skill in the pertinent art required 4. Secondary considerations (commercial success, long felt need, failure of other devices, copying, unexpected results, awards and praise)

What are the basic requirements of a patent application?

1. Specification, including a summary of the invention and drawings in most cases. 2. One or more claims at the end of the specification. 3. An oath, declaring the inventors actuall y invented what is described in the invention; and 4. Filing fees

How do courts construe means-plus-function claims?

1. The first step is to determine whether the term in question is a "means-plus-function." 2. The court identifies the function of the term based on the claim term language. 3. Identify the corresponding structure, material, or act based on disclosed embodiments. 4. At the infringement stage, the fact-finder determines whether the accused device fall within "equivalents thereof" at the time of the patent issuance.

What are the elements of the inequitable conduct defense to patent infringement?

1. The patentee has specific intent to deceive. 2. The deception was material. 3. Even if the above requirements are met, the court weighs the equities before holding the entire patent unenforceable.

In patent law, what are the two requirements for the "on sale" prong of the statutory bar to apply?

1. The product must be the subject of a commercial offer of sale. 2. The invention must be ready for patenting.

What must a patent application include?

1. The specification, including a summary of the invention and drawings in most cases 2. One or more claims

What is the difference between a post grant review and an inter partes review?

1. Timing - Post grant review may occur up to nine months after issuance. Inter partes review occurs after nine months. 2. Scope - Inter partes review is limited to patents and printed publications. Post grant review is available for any grounds available in district court.

Name three areas in which the application of an absolute bar due to prosecution history estoppel is inappropriate.

1. Unforeseeable equivalents. 2. Amendments made for reasons tangential to the equivalent in question. 3. A residual category where "for some other reason" the patentee could not be expected to have developed the equivalent.

Typically, how long does it take for a patent examiner to see your application?

14 months

Until 1995, what was the patent term of protection?

17 years from the date the patent was issued.

What is the current term of protection for patents?

20 years from the date the application is filed.

What is the citation for the part of the patent act that defines the scope of patentable subject matter?

35 USC 101

Where is the novelty requirement found?

35 USC 102(a)

What statute outlines the requirements for a specification?

35 USC 112

When are patent applications published?

35 USC 122 provides that all patent applications are published 18 months after the first filing date

What statute gives a patentee a cause of action for infringement?

35 USC 271

What exception to patent infringement exists for the manufacture of drugs?

35 USC 271(e)(1) provides an exception solely for uses reasonably related to the development and submission of information under Federal law related to the manufacture, use or sale of drugs.

What is a blocking patent?

A blocking patent involves an improvement on a previous patented invention. The holder of a blocking patent has the right to exclude everyone from her improvement, including the holder of the broad patent, while at the same time being barred from use of the improvement herself unless the holder of the broad patent authorizes such use.

In patent law, what is a dependent claim?

A dependent claim incorporates all the limitations of the independent claim on which it depends.

What was the holding of Association for Molecular Pathology v. Myriad Genetics?

A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.

Under the America Invents Act, what are "prior user rights?"

A non-patentee may continue to use an invention if he can prove that he was using it before it was patented by someone else.

What was the rule in Griffith v. Kanamaru?

A party in an interference proceeding that was the first to conceive but last to reduce to practice is entitled to a patent only if he acted reasonably diligently to reduce to practice.

What rights are conferred by the grant of a patent?

A patent confers the right to exclude others from making, using, selling, offering for sale, or importing the claimed invention for a specific term of years.

What is the "foreseeable bar" in prosecution history estoppel?

A patentee is barred from seeking doctrine of equivalents protection for any matter it should have known it was giving up by amending its claims. By contrast, if a reasonable patentee could not have foreseen the limiting effect of an amendment, the doctrine of equivalents remains available.

What is a post grant review?

A post grant review permits anyone to challenge the validity of a patent within nine months of its issuance.

What is a preliminary amendment to a patent application?

A preliminary amendment constitutes changes made to the application before examiner's first response or office action.

What was the rule from In re Hall?

A printed publication is one to which the public had access and triggers the statutory bar.

What is the Machine or Transformation Test?

A process is patentable if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

Under what circumstances does the "on sale" prong of section 102(b) trigger the statutory bar?

A single sale or offer to sell a product will start the clock running, whether or not it was made in secret. Discussions that do not rise to the level of a definite offer to sell the invention will not bar a later patent on the invention.

What is a statutory bar to a patent application?

A statutory bar is a bar to patentability based on too long a delay in seeking patent protection. 35 USC 102(b) provides that a statutory bar will be imposed if the invention was patented or described in a printed publication in this or a foreign country or in public use or sale in this country more than one year prior to the date of the application for patent in the United States.

In patent law, what is a reissue and what time constraints are placed on it?

After a patent is issued, the patentee may seek a reissue of a patent to narrow or broaden the scope of protection. If the patentee is seeking broader protection, the reissue must occur within two years of issuance.

In patent law, what is an independent claim?

An independent claim is one that does not refer to any other claims.

What is an interference proceeding?

An interference proceeding is a priority dispute between two or more inventors, all of whom claim to have been the first inventor of a particular invention?

What is an office action by the patent office?

An office action is a response by the examiner. It either allows or denies the application after a search of prior art.

How is the patent office structured?

Applications are assigned to one of 17 examining groups, then to a specific art unit.

What was the rule in Larami Corp. v. Amron?

Because every element of a claim is essential and material to that claim, a patent owner must, to meet the burden of establishing infringement, show the presence of every element or its substantial equivalent in the accused device.

What did Phillips v. AWH Corporation teach about claim construction?

Claim construction should begin with the ordinary meaning of the words, but the claim terms must be read in the context of the particular claim and the entire patent including the specification.

Generally, what is a "claim" in a patent application?

Claims define the boundaries of the property right that the patent confers.

What is the standard of review for claim construction?

De novo

What is the prior art ensnarement rule?

Equivalents may not be defined so broadly as to ensnare prior art.

What was the holding in Hughes Aircraft Co. v. United States?

Given technological advances, the change in the way the satellite performed its function was insubstantial. The new method was essentially the modern day equivalent.

If a patentee inadvertently fails to claim a disclosed element, what is his remedy?

He may file a reissue application or a continuation application.

What is the policy supporting the doctrine of equivalents?

If competitors could circumvent patents through insubstantial changes in the design of a product, then many patents would lose their value, and patent drafters would expend unreasonable efforts trying to include every possible variation.

What was the rule from the incandescent lamp patent?

If the specifications of a patent are so vague and uncertain that one of ordinary skill in the art cannot tell, except through undue experimentation, how to construct the patented device, the patent is void.

After publication but before the issuance of a patent, what rights does the patent applicant have?

If they provide notice that a patent is pending, and the infringing product is substantially identical, they may obtain a reasonable royalty as damages in an infringement suit. Injunctions are unavailable to patent applicants whose patents are still pending.

What did Madey v. Duke University hold?

Madey v. Duke University held that if an act is in furtherance of the alleged infringer's legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense.

What was the holding in Brenner v. Manson?

Manson's steroid was not useful, although its homologue was.The product itself must be useful to receive a patent.

What was the holding in Juicy Whip, Inc v. Orange Bang, Inc.?

Morality is not grounds for invalidating a patent. The FTC, FDA, and others are charged with preventing consumer fraud, not the Patent Office.

What was the holding of O'Reilly v. Morse?

Morse's claim for the use of electromagnetism for making or printing intelligible characters at any distances was denied. Morse may not patent the idea of using electromagnetism to communicate.

Do moral rights exist in patent law?

No

Is independent creation a viable defense to patent infringement?

No

In patent litigation, what is joint infringement?

No single person or entity performs all the acts required to infringe a claim, therefore no direct infringement has occurred. Joint infringement creates liability for an inducer that causes, urges, encourages, or aids the infringing conduct.

Does the fact that prior art is unobservable render the use "private" for purposes of the statutory bar?

No. In Hall v. MacNeale, the use of a hidden feature in safes was public enough to create a statutory bar.

Must an invention be completed and built before it can be "on sale" for the purposes of section 102(b)?

No. The Supreme Court reasoned in Plaff v. Wells Elec., Inc. that invention occurs when the inventor conceived of the product and did not require proof that the invention have actually been built. However, the Court did require evidence that the inventive concept itself was complete, rather than merely substantially complete.

What effect does an accused product's adding patentable elements to the original patent have on an infringement suit?

None. Infringement is still found if all of the elements of the original product are present.

Under the AIA, what relevance does geography have to novelty and statutory bars?

None. The AIA eliminates any reference to geography.

What duty to disclose do patent applicants have?

Patent applicants do not have to conduct a prior art search, but if they know of prior art, it must be disclosed.

What is the Lexicographer rule of claim interpretation?

Patentees are free to be their own lexicographers-i.e. to define claim terms in any way they wish.

What is the difference between novelty and priority?

Priority is a question of who, as between two rival inventors, will obtain a patent for an identical identification. Inventor v. inventor. Novelty is a question of whether, as between an inventor and a piece of prior art, the inventor acts before or after the prior art enters the field. Inventor v. Prior Art.

Under the America Invents Act, how is priority determined?

Priority is determined by who files a patent application first.

What is the rule from Mayo Collaborative Services v. Prometheus Laboratories, Inc.?

Process claims based on a law of nature must do more than apply that law of nature. They must contain some inventive concept, sufficient to ensure the patent is significantly more than the law of nature itself.

What was the rule from Egbert v. Lippmann?

Public use requires just one of the patented article. The use need not be visible or widely known. A gift to use the invention without restrictions is a public use.

In patent law, what is the reexamination process?

Reexamination reopens a patent proceeding if substantial new basis for questioning patentability arises after issuance.

What are the categories of patentable invention?

Section 101 of the Patent Act defines the categories of patentable invention broadly to include any process, machine, manufacture, composition of matter, or improvement thereof.

In determining whether the use of a product is public, for the purposes of novelty and the statutory bar, what does the Federal Circuit focus on?

The Federal Circuit has focused on the nature and purpose of the use in deciding whether it was public or not. Commercial use is generally a public use, even if it is secret and even if it occurs only once. Use for personal interest or enjoyment will generally not be considered public use.

What is distinctive about civil procedure in patent litigation?

The ICMO or Patent Local Rules often specify staged disclosures of claim construction and other contentions, then a Markman hearing, the a claim construction order. After the claim construction order, additional discovery is conducted followed by summary judgment or a trial.

What is the process for blocking importation of infringing patents?

The International Trade Commission has jurisdiction to block the importation of products into the United States if they infringe U.S. patents and to block the importation of products made by processes that are patented in the United States. Patent owners must complain to the ITC, which will bring a 35 USC 337 action against the likely infringers.

Is claim construction a question of fact or a matter of law?

The Supreme Court held in Markman v. Westview Instruments that claim construction is a matter of law.

Does the doctrine of equivalents apply to individual elements of a claim or the invention as a whole?

The doctrine of equivalents applies to individual elements of a claim.

Explain why patent law's exclusionary right is a "negative" right.

The exclusionary right is a negative right for two reasons. First, a patent does not automatically rant an affirmative right to do anything. Patented pharmaceuticals, for instance, must still pass a regulatory review at the FDA to be sold legally. Second, a patented invention may itself be covered by a preexisting patent.

What is the experimental use defense to patent infringement?

The experiment use defense allows for the unlicensed construction and use of a patented invention for purposes of pure scientific inquiry.

In a patent application, what is the information disclosure statement?

The information disclosure statement describes prior art known to applicants at the time of filing.

What is the rule from Diamond v. Chakrabarty?

The laws of nature, physical phenomena, and abstract ideas are not patentable. However, the nonnaturally occurring manufacture or composition of matter, a product of human ingenuity having a distinctive name, character, and use, is patentable.

Are patents based on mathematical formulas patentable?

The mathematical formula itself qualifies as a law of nature and is unpatentable. The Supreme Court held in Parker v. Flook that the proper way to analyze a claim involving a mathematical formula is to assume that the formula is in the public domain, then see if the remaining elements of the claim contain a patentable invention.

What was the rule from Bilski v. Kappos?

The text of section 101 does not limit process patents to passing the machine or transformation test, nor does it permit categorical exclusion of all business methods. However, abstract ideas are unpatentable and the machine or transformation test may be a useful tool for determining whether subject matter is patentable.

What is the Triple Identity Test and which case limited its applicability?

The triple identity test provides that under the doctrine of equivalents, equivalence may be found where the accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result. The Supreme Court in Warner-Jenkinson did not reject the triple identity test, but noted that it may be more suitable for mechanical inventions than to chemical processes.

What is the rule provided by City of Elizabeth v. Pavement Company?

The use of an invention by the inventor by way of experiment and in order to perfect the invention, does not constitute public use.

What did Therasense, Inc. v. Becton-Dickson hold?

Therasense held that the company's failure to disclose the European patent applications deceived the PTO and remanded to determine whether the PTO would have granted the patent if the EPO briefs were disclosed.

What were the rule and holding from The Gentry Gallery, Inc. v. The Berkline Corp.?

To fulfill the written description requirement, the patent specification must clearly allow persons of ordinary skill in the art to recognize that the inventor actually invented what is claimed. Claims may be no broader than the supporting disclosure. Therefore, several of Gentry's claims, which were directed to sectional sofas in which the location of the recliner controls is not limited to the console, are invalid because they were not supported by the written description.

Inherency Doctrine

Traditionally, where the first, accidental producer of a product was not aware of the product and did not attempt to produce it, the first production did not bar a patent on the invention of the product. However, the modern trend in the Federal Circuit is to focus on whether the work existed in the prior art in a way that provided a public benefit.

In patent law, what is the test for utility?

Utility must be specific, credibile, and substantial.

What is the rule provided by Johnson & Johnston Associates Inc. v. R.E. Service Co., Inc.

When a patent drafter discloses but fails to claim subject matter, such subject matter is dedicated to the public.

What is prosecution history estoppel?

When a patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent.

What was the rule in Rosaire v. National Lead Co.?

When an invention is known or used by others openly and in the ordinary course of business, no affirmative act is required to bring the work to the attention of the public at large.

What is claim differentiation in the context of claim construction?

When different words are used in separate claims, a different meaning is presumed.

What were the rule from Woodland Trust v. Flowertree Nursery, Inc.?

When the alleged prior knowledge and use occurred in the distant past, corroboration of oral testimony is required to destroy novelty of future inventions.

What is the rule of KSR International Co. v. Teleflex, Inc.?

Where there is a design need or market pressure to solve a problem and there are a limited number of predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his technical grasp. Teaching, suggestion and motivation test was rejected as too narrow.

May third parties submit prior art references in a patent prosecution?

Yes

May the doctrine of equivalents be applied to means-plus-function claims?

Yes, if the function was equivalent but not identical and the accused device contained an equivalent to the patented structure.

In patent law, is there such a thing as an "experimental sale" for the purposes of the statutory bar?

Yes. The inventor must maintain control of the invention and the customer must be aware of the experiment if experimentation is to be found.