LEB 380 Patent Quiz

what is a patent

IP right granted by the government to an inventor that gives them the exclusive right to the invention for up to 20 years, in exchange for disclosing the details of the new technology to society

rationale for issuing a patent

stimulate the inventive genius and entrepreneurial energy of the common man

• promote innovation & encourage inventors

what is the only way a patent can potentially slow innovation

if their grant of exclusive rights is TOO broad

two goals of todays US patent

1. stimulate invention — ensure creation and productivity

2. share knowledge — progress by disclosing inventions

a new type of patent system for everyone (6)

1. Low fees: making patents affordable (cheap)

2. Simplifying application procedures

3. No “working requirements” reduce monopoly control 

4. Disclosure of new technologies

5. Examination systems (novelty, utility, nonobviousness)

6. Creating a market for new technology 

the patent act

A machine, manufacture, process, or composition of matter can be patented if it demonstrates the following three criteria:

1. novelty

2. utility

3. non obviousness

what is novelty

Invention must never have been previously

• Patented or publicly used 

• Described in a patent application  (published or not)

• Written about 

• Disclosed to the public 

• Offered for sale anywhere in the world 

Must not have been previously described or known.

utility

• Invention must function as intended (USEFUL)

• Must have an obvious purpose

• must actually work, no fraud

non obviousness (hardest hurdle)

1. Combining two such widely known and available elements would be obvious to anyone skilled in the art of office furniture design 

2. But not so obvious with a camera phone 

   1. Because they became more than the sum of their parts and met a significant and previously unfilled need in the marketplace 

what is prior art

any previous patent, publication, or use

• whether enough of the invention has been disclosed to enable a person skilled in the applicable art to duplicate the product or process

• limited disclosure that does not reveal the secrets of the invention can still foreclose a patent if the public use of it “discloses the invention’s benefits.

a patent gives the right to …

exclude everyone in the US from

• making

• using

• selling

• offering for sale

• importing

the patented invention

5 requirements for patenting

1. subject matter

2. utility

3. novelty

4. nonobvious

5. timely filing

what is timely filing

Patent must be filed within one year of “creation”

two categories for a patentable inventions

1. product — physical things

2. process — a means to an end

what is a product

Physical things

• machine

• manufactured item

• composition of matter

what is a process

(method)

a means of doing something new

new way of doing something old

all patented inventions fit into one of the four categories

• machine

• manufacture

• composition of matter

• process

things you CANNOT patent

mere idea

abstract ideas

mathematical formulas (law of nature E=mc²)

mental processes

AI-only inventors

natural phenomenon (electricity)

naturally occurring substances

algorithms alone cannot be patented BUT

algorithm + specific process (utility) = ok

algorithm to produce a tangible and inventive result

• Technical integration – algorithms combined with a specific technical process or system 

• Enablement – must describe the steps clearly enough for another expert to replicate the system 

what is PHOSITA

Person Having Ordinary Skill in the Art

Hypothetical person used in patent law to evaluate whether an invention is non-obvious

plant patents

• distinctiveness

• Distinct & new variety of asexually propagated plant 

• Hybrid rose plant with a novel color

design patents

protects ornamental aspects/ appearance

utility patents

protects functional aspects

• Works to produce a useful result 

  • Process

  • Machine

  • Article of manufacture 

  • Composition of matter 

Claim vs Abstract

Abstract — tells you nothing about exclusive rights

claims — specific exclusionary rights

Provisional Patent application

abbreviated

• not subject to examination and viable for one year

• less expensive

• earlier filing date

• placeholder for up to one year while the inventor does all prior art search, claims drafting

disadvantage of provisional application

written description cannot be changed when filing the follow-on, nonprovisional application, all the subsequent claims in that follow-on application must be completely consistent with the earlier description language.

nonprovisional patent application

complete

most critical task is to draft the claims

claims

each claim serves as a stand alone definition of the patent coverage

• after patent is granted a claim is only thing someone can be accused of infringing

the broader a claim…

the more likely it is that prior art may exist somewhere that anticipates the claim or renders it obvious and, therefore, invalidates the claim

claim construction

dispute over the meaning of certain language used in asserted claims