Fundamentals of IP Questions

Fall 2026

trademark

a word, phrase, symbol, design or a combination of these things that identifies the source of a good or service

copyrights

protects an original work of authorship as soon as an author fixes the work in a tangible form of expression

trade secrets

all types of info however stored or maintained which the owner has taken reasonable measures to keep secret and which has independent economic value

patents

protects the holder with the right to exclude others from making, using, selling, offering to sell, and importing the patented invention.

for patent does this mean that an inventor can make, use, sell, offer to sell, and import the patented invention?

no

when does a patent expire?

approximately 20 years after the patent application date

4 components of patents

title, description, figures, claims

the name of the game is the…

claim

who came up with that quote about the name of the game is the claim?

Giles Rich

Legal definition of what a patent cover is/are…

claims

title

describes the invention in a few words

description

describes the invention in detail

figures

shows the invention

claims

defines what the invention covers

In Pennock v Dialogue, the Supreme Court held that an inventor’s patent is invalid if, with their consent and before filing a patent application, the invention was:

publicly used or sold, as this constitutes an abandonment of the right

Why did SCOTUS conclude that Nicholson’s use of his pavement on a public road did not constitute a disqualifying public use?

Nicholson’s use was a bona fide experiment designed to test the pavement’s durability and improve the invention, rather than a commercial exploitation of the invention

NDA

active security precautions to protect the secrecy of your invention until the patent application is filed with the USPTO

A microbiologist investigating bacteria in soil contaminated by PFAS "(“forever chemicals”) discovers a previously unknown bacterium that naturally breaks down several components of said chemicals. The microbiologist isolates the bacterium from the soil. The microbiologist does not genetically modify or otherwise alter the bacterium, but she grows a pure culture of it in the laboratory and finds that it could be extremely valuable for breaking down PFAS. The microbiologist applies for a patent claiming the isolated bacterium itself. Under the reasoning of Diamond v Chakrabarty, which of the following is the best answer regarding patent eligibility under 35 U.S.C. §101?

The bacterium is likely not patent-eligible because it is a naturally occurring product of nature whose relevant characteristics were discovered rather than created by human ingenuity.

Which claim is most likely NOT patent eligible under Mayo?

A natural relationship combined only with routine, conventional steps

patent prosecution

interaction between the patent applicants and the USPTO before the patent is issued

If you are a biotech entrepreneur today, what is the ultimate moral of the Myriad story regarding the patentability of things found in nature?

You can’t patent a raw natural discovery just because you found where it was, but engineered or synthetic lab creations are fair game

Under Alice Corp. v. CLS Bank, why were the patent claims held ineligible under 35 U.S.C. §101?

Because the claims were directed to the abstract ideas of intermediated settlement and genetic computer implementations added no inventive concept beyond that idea

Under Brenner v. Manson, when does a chemical process satisfy the utility requirement for patentability?

When the compound produced has practical utility in currently available form

A company discovers 6 new expressed sequence tags (ESTs) and applies for patents on them. The common specification only states that the ESTs are useful for molecular marker for genome mapping, and applicant concedes that there are no known use for the new six sequences. Under In re Fisher, are the six ESTs patentable (under §101)?

No, because the claimed ESTs lack specific and substantial utility

A machinist built a device identical to the one later patented and used it in his own workshop for 9 years. He never described it to anyone, the machine was scrapped, and how it was made passed out of memory. The patentee invented independently, in ignorance of it. Under Gayler v. Wilder, what result?

The patent stands. A prior invention that never reached the public and has been lost does not defeat novelty.

A device identical to the one later patented was described, in full working detail, in a mechanics’ magazine published in 1830. The magazine folded the next year, bound copies survive in a handful of libraries but no one in the trade now recalls the design. The patentee invented independently in 1845 in complete ignorance of it. Under the reasoning of Gayler v. Wilder, the strongest argument that the patent is invalid is:

The description survives where anyone may consult it so the invention was recorded rather than lost and the public was never deprived of it.

Thurgood invents a clever product of Jan 1, 2017 and starts selling it on Jan 1 2018. Coincidentally, Ruth invents the same product and files for a patent on Jan 1, 2025. Ruth attests that she was not aware of Thurgood’s invention before she filed. Thurgood files for a patent Jan 1, 2026. The USPTO should:

Not issue a patent to anyone

Thurgood invents and sells a clever product on Jan 30, 2026. Coincidentally, Ruth who does not know about Thurgood’s invention, invents the same product and files for a patent with the USPTO on June 1, 2026. Thurgood files for a patent with the USPTO on September 1, 2026. The USPTO should:

issue a patent to Thurgood if no one else has disclosed the product before Jan 30, 2026

An inventor obtains a patent for a mechanical device. In a subsequent infringement action, the accused infringer argues that the patent is invalid because the same invention was already known to the public by 3 people before th inventor obtained the patent. The accused infringer offers testimony from the 3 witnesses who claim to have been aware of the device’s creation but they could not testify to whether the mechanical device was complete and capable of producing the intended result. The inventor (patent-holder) argues the infringer was also aware of the patent. Who wins?

Inventor (patent-holder) because the infringer did not prove their mechanical device was complete and capable of working

In Verdegaal Bros. v. Union Oil Co., the Stoller patent was treated as prior art even though it was issued after Verdegaal’s patent. Why?

Because prior art is judged by filing date, not issue date. Stoller filed his application before Verdegaal invented so it counts as prior art from that earlier filing date

In 1995, prior art taught growing and eating Crucifera rutgersiensis. In 2007, researchers discovered that sprouts of Crucifera rutgersiensis grown according to the prior-art method necessarily contain Newarkosin, a compound with previously unknown health benefits. The researchers obtain a patent claiming a method of preparing Crucifera rutgersiensis sprouts rich in Newarkosin. The patent owner later sues a competitor for infringement. The competitor argues that the claim is anticipated by the 1995 prior art. Who is likely to prevail?

The competitor because Newarkosin was inherently present when practicing the prior art even though its presence was previously unknown

PHOSITA

(P)erson (H)aving (O)rdinary (S)kill (I)n (T)he (A)rt

Graham’s ‘798 patent differed from the prior art in one respect: the plow shank was bolted below the hinge plate rather than clamped above it. In holding the patent invalid, the Supreme Court:

Asked what the prior art contained, what Graham added to it, and what a skilled mechanic already knew

Which of the following is NOT one of the four Graham factors referenced in Stratoflex?

whether the inventor personally profited from the invention

Amy has a patent for a sealed crustless sandwich. Ben, inspired by the concept of sealing something within a food item, applies for a patent for a sealed chocolate egg containing a toy inside. His application is rejected because the claim is obvious considering Amy’s patent. If this case gets ap