PUBP 4640: Weeks 1 & 2

patent

(n.) exclusive rights over an invention; copyright; (v.) to arrange or obtain such rights; (adj.) plain, open to view; copyrighted

trade secret

A formula, device, idea, process, or other information used in a business that gives the owner a competitive advantage in the marketplace.

utility patent

a patent that protects the functionality of the invention

design patent

a patent that may be obtained for the ornamental nonfunctional design of an item

plant patent

A unique patent right granted to inventors of new forms of plants.

Article I, Section 8 (Patents)

Patents established in this article of the Constitution

Title 35 U.S.C, Section 100

Definitions for patentability

Title 35 of the U.S. Code

patent laws

Title 35 U.S.C., Section 101

patentable subject matter

Title 35 U.S.C., Section 102

novelty, based on one patent

Title 35 U.S.C., Section 103

non-obviousness, based on 2 or more patents

Title 35 U.S.C., Section 112

patent application requirements

America Invents Act (AIA)

changed the patent system in the US from a first-to-invent system to a first-inventor-to-file system

Diamond v. Chakrabarty (1980)

Ruled that a man-made life form (genetic engineering) could be patented.

"useful" patents

operativeness; a machine which will not operate to perform the intended purpose would not be called useful.

Non-Patentable Subject Matter

Natural phenomenon, abstract ideas, and laws of nature.

Mayo v. Prometheus (2012)

drug trials and methods ruled to be ineligible for patent application -> frees clinical pathologists to practice their medical discipline vs. destabilizes patent law and stunts investment in the field of personalized medicine, preventing new products and services from emerging in that field

Alice v. CLS Bank (2014)

Alice two-step test:

a patent claim under examination is rejected if it

1. contains an *abstract idea*, and

2. does not add to it something extra that embodies an *inventive concept*

The Court held that patent law should not restrain abstract ideas that are the "building blocks of human ingenuity" and held all of Alice's claims ineligible for patent protection. Because using a third party to eliminate settlement risk is a fundamental and prevalent practice, it is essentially a building block of the modern economy. The Court held that Alice's claims did no more than require a generic computer to implement this abstract idea of intermediated settlement by performing generic computer functions, which is not enough to transform an abstract idea into a patent-eligible invention.

Atomic Energy Act of 1951 (Title 42 U.S.C 2181)

inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon may not be patented.

U.S. patent grace period

1 year

Canadian patent grace period

1 year

U.K. patent grace period

6 months

non-obvious (patent)

No combination of prior art teachings that would be obvious to combine to disclose each and every element of the invention

KSR v. Teleflex (2007)

Broadened what "obvious" means for rejecting patents; TSM test

Section 112 Patent Requirements

description, enablement, best mode

How long after a patent is issued is it published?

18 months

Provisional Patent Application

a part of patent law that grants "provisional rights" to an inventor for up to one year, pending the filing of a complete and final application

assignee (patent)

the party to whom the assignment is made

Inventorship

An inventor must contribute to the conception of the invention. There is no requirement that an individual perform the work necessary to enable the invention. It is necessary that an individual conceive of one aspect of at least one claim of a patent application.

utility patent term length

20 years from the date of filing; potentially subject to an extension

design patents term length

15 years from the date of issue

USPTO

U.S. Patent & Trademark Office examines and issues patents; within the US Dept of Commerce since 2000