Patent - Introduction

Patent Latin Meaning

Patere - to be open

Constitutional Provision for Patents

Article I, Section 8, Clause 8 authorizing Congress to award exclusive rights for a limited time to authors and inventors “for their respective writings and discoveries.”

Patent law is and has been…

exclusively federal

Court of Appeals for the Federal Circuit hears…

all appeals involving patents

Five Requirements for Patentability

1. Patentable Subject Matter

2. Utility

3. Novelty

4. Nonobviousness

5. Disclosure

What is a Patentable Subject Matter?

claimed invention fits within one of the four statutory categories (“process, machine, manufacture, or composition of matter”) or “improvement thereof”

What are the two aspects of utility?

(1) credible utility—it must work for its intended purpose; and (2) specific and substantial utility—it must serve a particular practical purpose.

Utility can be found even if

the invention works only in an experimental setting and has no proven use in the field or factory. But it must serve some purpose, possibility that it might be used later is not enough

How is novelty evaluated?

based on technical rules aimed at determining whether the claimed invention was in the prior art.

What is novelty?

invention has not been preceded in identical form in the public “prior art”

Nonobviousness is considered the…

most important requirement; it has been called “the ultimate condition of patentability.”

Why is nonobviousness so important?

attempts to measure an even more abstract quality than novelty or utility: the technical accomplishment reflected in an invention, whether an invention is a big enough technical advance over the prior art.

What must the patent disclose?

must convey to a person having ordinary skill in the art:

(1) written description—the inventor gave a detailed account of the invention that demonstrated “possession” as of the time of filing the application; and

(2) enablement—that the specification enable a person having ordinary skill in the art to make and use the invention.

What does the disclosure requirements ensure?

social bargain underlying the patent grant is fulfilled—those “skilled in the art” can understand the inventor’s contribution, after the patent expires they will be able to make and use the invention themselves.

What does the specification of the patent include?

1. Description of invention

2. Names all parts or components of invention

3. How components work

4. How they work together to perform invention’s function

5. Drawings

6. Legal definition of invention/claim

What do claims define?

the boundaries of the intangible property right that the patent confers.

Each claim is its own…

legal entitlement. even if some claims are later ruled invalid, the other claims remain in force.

Broad vs Narrow Claims

Broad claims can secure vast swaths of “intangible property,” but risk being “anticipated” (invalidated) by prior art.

Narrow claims reduce such risk, but can be circumvented by competitors who navigate around claim restrictions (non-infringement).

Claims section usually being with…

broadest claim, which is then “qualified” through a series of narrower dependent claims, followed a narrower independent claim, which may itself be qualified by a series of dependent claims. (inverted pyramid)

What do dependent claims confer?

adds one or more limitations or restrictions

Open vs Closed transition

claims using open transitions cover devices that include all the listed elements plus any additional elements. Ex: Comprising

Closed transition indicate claim does not cover devices that include additional elements. Ex: Consisting of

How long does a patent last?

20 years from the filing of the patent application.

What does a patent exclude others from doing?

making, using, selling, offering for sale, or importing the claimed invention

Patent liablity

Strict liability offense (intent does not matter)

What the patent exclusionary right is a negative right

1. patent does not automatically grant an affirmative right to do anything;

2. Patented invention may itself be covered by a preexisting patent. Ex: blocking patents, holder of broad patent barrs use of improvement patent

How long does the average prosecution take

3 - 4 years, but by paying fee applicants can “fast track” application to about 14 months

How much attention does a patent receive over the course of prosecution?

18 hours

How does prosecution begin?

Filing of a patent application, can be a “placeholder” application called a provisional app, but must be converted into non-provisional app within one year

What are the basics of a patent application?

(1) the 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 inventor(s) actually invented what is described in the specification; and

(4) applicable filing fees.

Steps for Patent Prosecution

1. File application

2. Assigned to specific “art unit”

3. Examiners make initial review (search for prior art)

4. After rejections applicant can contest/traverse

5. Amendments to application (allowed until final rejection)

6. Final rejection of claims (misnomer)

7. Patent granted or application abandoned

Most common action after initial review

rejection of most of the claims in the application, often on grounds of lack of novelty or obviousness.

Examiners in regards to rejections must

state the reasons for each rejection, has burden to show why app should not issue as patent

Applicants may file…

additional papers, such as an information disclosure statement (IDS), describing prior art known to the applicant at the time of filing,

Why applications are most commonly amended…

respond to a rejection or other office action. applicants can also correct mistakes, add or change drawings, and even update the disclosure portion of the specification

How can applicant respond to final rejection?

typically by a continuation or amendment after final rejection. (Can also file appeal with Patent Trial and Appeal Board if applicant feels continued prosecution would not be worthwhile but issues with examiner)

What is a continuation?

basically a new version of the application, Filing a continuation resets the examination process. Two types: simple continuation and continuation-in-part (“CIP”)

What is simple continuation application?

retains the benefit of the initial application’s filing date; it therefore may serve much the same role as an amendment.

What is a continuation-in-part (CIP) application?

adds new matter to the specification. This new matter does not retain the benefit of the earlier filing date (matters because only prior art before that date applies), though any information carried over from the original filing does.

When the examiner has allowed some claims but issued final rejections against others, what is the typical strategy by applicant?

take the bird in the hand and fight over the contested claims separately. To achieve this, the applicant can file an amendment after final rejection canceling the rejected claims.
Rejected claims may be carried over into a separate continuation application while slimmed down application allowed to issue as patent

What did the American Inventors Protection Act (AIPA) establish regarding publication of patents?

most applications are published eighteen months after their filing date.

What are the legal rights when patent has published but has not been issued yet?

if infringer has actual notice of the published patent application, and the claims in the published application are “substantially identical” to the claims in the patent when issued, the applicant/patentee can recover a reasonable royalty from the infringer.
- however, published application cannot be enforced with injunction

What percentage of patent applications end up being granted?

3/4, half of remainder are abandoned not because PTO rejected

Can patentee seek a reissue of the patent?

Yes, so long as the deficiency in the original patent is the result of a bona fide error or omission. Reissues to broaden the scope of claims must be initiated within two years of the original issuance

Where can a patent owner enforce the patent?

Federal court

What are the three other forms of patent litigation?

Post-Grant Review Proceeding
Declaratory Relief Action

Section 337 Investigation

What is Post-Grant Review Proceeding

Patent office affords patentees and challengers with several post-grant proceedings to ensure that the patent was properly issued.

What is a declaratory relief action?

Companies that reasonably fear being sued for patent infringement can file declaratory judgment actions seeking to establish that the patent at issue is invalid, or that their conduct does not infringe the patent.

What does a Section 337 Investigation allow?

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 abroad by processes that are patented in the United States.

What is the central theory behind patent law?

inventions are public goods that are costly to make and that are difficult to control once they are released into the world. As a result, absent patent protection inventors will not have sufficient incentive to invest in creating, developing, and marketing new products. Patent law provides a market-driven incentive to invest in innovation (classical incentive theory)

What is the central framework for patent scholarship?

utilitarian framework, granting temporary monopolies to inventors maximizes overall societal welfare, incentivizing innovation that benefits everyone despite higher short-term prices

Patentable subject matter threshold is…

low, much of challenge is novelty and nonobviousness