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A patent is [answer] and the owner gets [answer] rights. The term limit is [answer] years and you [can/cannot] lose them early. It takes [little/lots] of time to secure these rights and [are/are not] expensive.
Public, broad, 20, cannot, lots, are
A trade secret is [answer] and the owner gets [answer] exclusive rights. They are protected until they are not secret. It takes [little/lots] of time to secure these rights and [are/are not] expensive.
Secret, limited, little, are not
True/False
There are different fees based on company size for acquiring a patent
True
Rule: Patents generally give you the right to [answer] others from using your technology
exclude
The scope of a patent is to protect [answer] and [answer]
products, processes
Background o Inventor A makes lightweight and stronger surfboard than most being sold o Inventor B makes Inventor A’s surfboard more aerodynamic
Who gets patent protection?
o Inventor A gets to make Inventor A’s surfboard o Inventor A can stop Inventor B from making Inventor B’s surfboard if they use Inventor A’s technology o They can cross license to solve this issue o Inventor B can use the technology after Inventor A’s patent expires and it falls into the public domain
All patents have a number that is called this
Patent Number
The date the patent becomes effective
Date of Patent
Rule: Must name all [answer] inventors
actual (human)
Company or party that owns the patent
Assignee
The patent’s term is 20 years from this date and this plays a significant role on if you get a patent
Filing Date
Rule: Must name anyone who contributed to [answer] to get a patent
conception
A technical expert in a specific field at the Patent Office who reviews a patent application to determine if a patent should get issued
Patent Examiner
Your attorney who helps you get a patent
Patent Attorney
Patents are a [answer]. You publicaly disclose a new technology, and you get exclusive rights for 20 years
quid pro quo
This is the duty to tell the examiner of known relevant information
Duty of Candor
Filing a patent application and convincing the US Patent Office to grant you a patent
Prosecution
You can file/prosecute your own patent application or have a patent attorney/agent do it for you with this
Representation
Rule: Must be a patent attorney or patent agent to [answer] a patent for someone else
prosecute
Patents require [answer], which is a high bar to pass and acquire this protection
examination
• Steps for [answer] o 1. Come up with new technology o 2. File Non-Provisional Application o 3. Office Action - About 17 months from date of filing o 4. Response to Office Action o 5. Examiner Interviews o 6. Notice of Allowance o 7. Pay Issue Fee
Patent Prosecution
Information or knowledge publicly available before the filing date of the application is known as this
Prior Art
General Rule: If a technology is described in the [answer], it is not new and you can’t get a patent on it
prior art
[answer] can include: o Printed Publications – US patents/published applications, foreign patent publications, internet information, books, etc. o Anything Otherwise Available to the Public – Oral presentations, lectures, demonstrations, etc.
Prior art
Written description of the invention and of the manner and process of making and using it
Specification
[answer] Rule: Specification must describe manner and process of making and using invention in terms sufficient to enable a person in the field to make/use it
- This is part of the patent quid pro quo. Inventor gets patent; public gets an enabled description of the technology - Doesn’t require enablement for the average layperson
Enablement
Background and Facts o The Electric Company sued McKeesport for patent infringement o Defendants alleged the patent was invalid o Patent claims to cover “all fibrous and textile materials” used as a light bulb’s filament - This is incredibly broad o However, it only discusses “carbonized paper” as a functioning filament in the specification o McKeesport asserts that the patent doesn’t describe how to successfully use “all fibrous and textile materials” as a lightbulb filament
Is the patent valid?
The specification does not enable use of the full invention claimed. Thus, that part of the patent is invalid
Rule: Defendant can prove that a patent is invalid during patent [answer]
litigation
Rule: The patent must teach someone in the [answer] how to make and use the full scope of the claimed invention
industry
Background and Facts o Fisher claimed a “nucleic acid molecule that encodes a maize protein or fragment thereof comprising a nucleic acid sequence selected from [a cDNA library derived from a particular type of corn] - It is common to isolate a nucleic acid molecule from a cDNA library o The application said that this molecule could be tried out with regard to 7 future research plans to see if anything interesting happened - Isolated molecule with plans for 7 different things to research with already known technology o The patent examiner rejected the application for not being enabled, and Fisher rejected
Should a patent be issued?
no patent should issue, and the invention is not enabled
Someone in the field can make and use the invention without undue experimentation
Enablement
The [answer] end with one or more claims particularly claiming the scope of the invention
specification
Rule: The [answer] define the exact metes and bounds of the patent’s protection
claims
True/False
Rule: Must infringe one claim to infringe the entire patent
True
o Broadest claim o Can have several independent claims in a patent
Independent claim
o Add additional limitations to the independent claims (to describe different iterations) o These limitations can make it harder to infringe, but they also make the claim harder to invalidate
Dependent claim
Which claims are independent and dependent?
Claim 1 – a horizontal plane with vertical supports to sit on Claim 2 – the invention described in claim 1, with a generally vertical support to lean back on Claim 3 – the invention described in claim 2, with wheels on the bottom of the vertical supports
Independent, dependent, dependent
Rule: Patents generally give you the right to [answer] others from using your technology
exclude
True/False
You can't secure a patent on an improvement on a prior technology
False
Patentable Subject Matter
101
Novelty
102
Non-Obviousness
103
Types of inventions that are potentially patentable
o Machine, manufacture, process, or composition - Process can be a method for making, using, or doing something o Utility - The subject matter must be useful o Not subject to a judicial limitation/exception
Patentable subject matter
Not previously known to the public
Novelty
Not an obvious variation of a known technology
Non-obviousness
o Laws of nature - e.g., E=MC^2 o Natural or physical phenomena - e.g., a newly discovered mineral o Abstract ideas - e.g., mental processes, such as a mathematical algorithm
Non-patentable subject matters
Background and Facts o Genetic engineer Chakrabarty developed a genetically modified bacterium capable of breaking down crude oil. His employer filed a patent application - It was rejected as claiming a naturally occurring phenomenon, which cannot be patented - Chakrabarty appealed the rejection o Legislative history – Patents should “include anything under the sun that is made by man” (very broad)
Can he get a patent?
Yes
Rule: a living organism can potentially be patented, if it is not [answer] occurring
naturally
Background and Facts o Telegraphs use coded pulses of electric current (morse code) through wires to transmit information o Morse secured a patent both for the electro-magnetic telegraph and electro-magnetism generally o Morse sued O’Reilly for patent infringement o Claim 1 – Described an enabled machine that used the transmission of electricity to convey a message o Claim 8 – I do not propose to limit myself to the specific machinery or parts of machinery described in foregoing specification and claims; the essence of my invention being the use of [electric current], however developed for marking or printing intelligible characters, signs, or letters - Essence of my invention is transmitting characters, signs, or letters, not just limited to telegraph machine
Is Claim 1 and Claim 8 patentable subject matter? Is the patent valid?
Yes, no, no
Rule: Natural or physical phenomena [is/is not] patentable subject matter
Is not
Background and Facts o Bilski sought a patent on Claim 1 to (a) sell a commodity future to a party, (b) find some group of people who have opposite risks from the selling party, (c) create a risk-offsetting transaction between the party o Application was rejected and Bilski appealed
Should a patent be issued?
No
Rule: Business methods are patentable, so long that they are not an [answer] idea
abstract
If a claim includes an “abstract idea” (or natural phenomenon or law of nature), it also shows an “[answer] concept” o This is an element to the claim beyond the judicial exception, which shows the invention to be “significantly more than judicial exception”
inventive
Which section is this describing?
• Can be important for chemical and biotech inventions; don’t need human clinical trials, but need some specific utility • But usually satisfied; silly or immoral inventions still have utility • Technically distinct from patentable subject matter
101
Background and Facts o Fisher applied for a patent - It is common to isolate a nucleic acid molecule form a cDNA library o The court found that this claim simply embodied isolating molecules using standard technology • Enablement – Court found that the patent didn’t tell you have to use the technology (as it didn’t give a use)
Will a patent be issued and why or why not?
No, no utility
Background and Facts o Manson alleges that he should receive a patent for the process of making a new steroid o The patent examiner found that the process did not satisfy the utility requirement o Manson claimed that the steroids in the class are being researched for tumor-inhibition and related steroids are effective for this o Manson’s second argument was that the process work, namely it produces the intended steroid. The production of the steroid is evidence of utility
should they get a patent?
No
Rule: Absent research showing a sufficient likelihood of utility, the Patent Office [will/will not] assume utility
will not
True/False
Rule: Current serious scientific investigation likewise fails to show utility
True
True/False
Rule: No patent until show actual utility
True
Rule: No [answer] considerations for utility in patent law
moral
New compared to prior art (i.e., the existing public knowledge as the time of the filing) o Public disclosures, or o Previously filed patent applications • Note: Exceptions if you made the disclosure
Novelty
35 U.S.C. – A person shall be entitled to a patent unless the technology was publicly disclosed before your effective filing date o Includes: patents, printed publications, public uses, sales/attempted sales, and other public availabilities o This can come from anywhere in the world
This is known as
Prior art
Rule: The prior disclosure must have been [answer]
On 1/1/20, I file this application o Claim 1 – a horizontal plane with vertical supports below, and generally vertical support to lean back on - Limitations – specific elements of the invention - Limitations here: • 1. Horizontal plane • 2. Vertical support below the horizontal plane • 3. Generally vertical support to lean back on - Examiner finds prior art matching this dated 1/1/1990 o Claim 2 – the invention of claim 1 with wheels at the bottom of each vertical support - Limitations here: • 1. Horizontal plane • 2. Vertical support below the horizontal plane • 3. Generally vertical support to lean back on • 4. Wheels at the bottom of the supports - Examiner does not find wheels on the prior art
Are Claim 1 and 2 patentable?
No, yes
I file a patent application on 5/1/15 claiming invention X • The examiner finds the below - will it prevent me from getting a patent?
A blog post written by another on 4/20/15 describing X
An academic paper written by another on 3/20/15. No one but the reviewers have seen it and are subject to an obligation of secrecy.
An article I wrote describing X that published on 1/1/15
Will these three things prevent you from getting a patent
Yes, no, no
Rule: You have [answer] year after you disclose to file o Note: This is for speeches/pitches/etc.
1
Duty of [answer]: Everyone involved with an application has a duty to disclose any material prior art to the examiner o This allows the examiner to examine all relevant prior art o Reviewed prior art is listed on the patent’s first page. This has litigation benefits
Candor
Inventor files a provisional patent application (PPA) with the US Patent and Trademark Office (USPTO)
o [answer] application - No claims necessary; no required disclosure of prior art o Have [answer] year from the PPA filing date for non-provisional patent, which will get the filing date of the PPA o Resulting patent will last 20 years from the filing date of the [answer] patent
Simplified, 1, non-provisional
Rule: You can also claim priority for a foreign patent application filed in the last [answer] months
12
Rule: 20-year patent term starts at your [answer] filing
domestic
Background and Facts o Helsinn makes a drug for chemotherapy induced nausea o During development, it agreed to sell the drug, if the buyer kept all the proprietary information a secret o Nearly two years later, Helsinn filed a patent application which would become a patent o Years later, Helsinn sued Teva for patent infringement. Teva argued that the patent was invalid under the “on sale” limitation o Helsinn argues that the prior sale was secret, and thus, it cannot qualify as prior art
Will a patent be issued?
No
True/False
Rule: A secret sale of an invention (e.g., under an NDA) by the applicant places the invention “on sale” for novelty purposes
True
True/False
Rule: A third party’s secret sale of the technology is not prior art against you, but your secret use of a technology is prior art against you
True
Background and Facts o Nicholson patented a process for using wood blocks in street pavement in 1854 o Nicholson was testing the process publicly for several years prior to filing the patent application o Nicholson’s company sued the city of Elizabeth for infringement o Elizabeth alleged the Nicholson’s patent was invalid because he had been publicaly using it for six years prior to the issuance of the patent
Will a patent be issued?
Yes
True/False
Rule: A person shall be entitled to a patent unless the technology was publicaly disclosed (including public uses) before your effective filing date
True
Rule (called the Experimental Use Exception): Public use of an invention is usually prior art, but there is an exception to the rule for public uses for [answer] purposes
o Application of this doctrine to consider - Necessity of public testing - Control over the experiment - Length of the test period - Secrecy obligations - Commercial use
experimental
Rule: The patent document must be from the United States. However, a published foreign patent document is [answer] as of the publication date
prior art
Rule: A patent/application [is/is not] prior art if filed after a public disclosure by me
is not
Rule: A patent/application [is/is not] prior art if the applicant obtained the technology from me
is not
Allows you to challenge an existing patent in a mini-trial at the USPTO
Inter Partes Review
Scope o Allows you to target specific patents that impede your business Standard o Must prove invalidity by a “preponderance of the evidence (>50%) rather than “clear and convincing evidence (>~70%), thereby allowing the challenger a greater likelihood of success Abuse o Some firms have threatened to attempt to invalidate a patent unless the owner pays a “settlement” - You are always free to settle in IPR - However, is it ethical to target a patent just to secure a settlement
This is describing
Inter Partes Review
Invalidity in Litigation o Patent invalidity is asserted in almost all patent infringement cases Scope o Any invalidity argument can be presented o Broader than IPR, as you can argue enablement, non-written prior art, etc. Cost o Patent litigation is very expensive Standard o Litigation favors the patent owner, as invalidity must be showed by “clear and convincing evidence (>~70%) - If the prior art reference was considered by the examiner and cited on the face of the patent, the patent is presumed patentable over the reference o Note: validity and infringement determinations commonly come out at the same time
This is describing
Federal litigation
A Person Having Ordinary Skill in the Art (a “PHOSITA”) could have come up with this invention from the then-current state of the art (I.e., the prior art prior to the filing of this application) o Hypothetical – we are asking “what if” and “could they”? o Combines multiple prior art references
This is describing
Obviousness
A patent may not be obtained – notwithstanding that the claimed invention is not identically disclosed in one piece of prior art – if the differences between the claimed invention and the prior art are such that the claimed invention would have been obvious before the effective filing date o This issue can come up during prosecution, inter partes review, invalidity challenges during litigation, etc. o The difference must be obvious to a person having ordinary skill in the art (PHOSITA) as of the filing date
This is describing section [answer]
103
A Four Step Test for [answer] o Prior Art - The scope and content of the prior art are to be determined o Difference - Differences between the prior art and claims at issue are to be ascertained o PHOSITA - The level of ordinary skill in the pertinent art must be ascertained o Other Considerations - Such secondary considers are commercial success, long felt but unsolved needs, failure of others, etc. might be utilized to give light to circumstances surrounding the origin of the subject matter sought to be patented
Obviousness
Background and Facts o Chisel plows – plow where the ground is relatively free from rocks or stones. To adopt to rocky/icy areas, they needed to absorb shocks or break o Prior art – addressed the problem by attaching the plow shanks to spring clamps, to allow to them to flex freely underneath the frame of the plow - Permits plow to be pushed upward when hits obstructions in the soil, and then spring back into position o Improvement Patent (?) – Graham putatively improved the design by placing the hinge plate beneath the plow shank rather than above o Graham alleges infringement by John Deere, who asserts the patent is invalid because it was an obvious variation of a known technology
Is the patent valid?
No
Rule: If the change achieves the same goal in the same way, it is [answer]
obvious
Background and Facts o Teflon tubing – used in the aircraft and missile industry to convey pressurized fuel, lubricants, and other fluids - Superior to organic/rubber hoses for many reasons - Not conductive, such that electric charge can build up inside hose and arc through tubes and cause leaks - Can be made conductive by adding chemicals, but that combination leads to leaks o Slade (Aeroquip) set out to invent a solution to this issue - Would ultimately be patented o Aeroquip alleges that Stratoflex infringes the patent o Stratoflex alleges patent invalidity - Novelty – no one prior art reference discloses the concentric Teflon tubes with inner being a conductor, out not being a conductor, and a grounding endcap
Is the patent valid?
No
Rule (Obviousness): If it would be obvious to a [answer] to combine elements from several prior art references to form the invention, then the patent may be invalid for being obvious
PHOSITA
Novelty is [one/one or more] reference Obviousness is [one/one or more] references
one, one or more
Background and Facts o Problem: Some storage tanks have a “dead volume” at the bottom of them. Liquids put in the “dead space” are either lost of must be pumped out without the help of gravity o Clay invented a process for storing liquid hydrocarbons in a storage tank having a dead volume bottom and its outlet port o Clay filed a patent application for the technology, but it was rejected for being obvious over two prior art references - Neither reference alone describes Clay’s invention o One of the prior art references deals with underground natural oil- bearing formations. The other deals with dead volume in a man- made (above-ground) tanks
Is it obvious?
No
True/False
Rule: A PHOSITA will have knowledge of the relevant prior art in their field (and can thus combine it)
True
True/False
Rule: It wouldn’t have been obvious to combine two references if one of them specifically said don’t do this
True
Rule: Evidence that a product embodying the patented technology was commercially successful is evidence of [answer]
non-obviousness
Rule: A competitor’s copying favors [answer]
non-obviousness
True/False
Rule: Each joint inventor must contribute to the conception of the invention o A contribution to one claim is enough to be considered a co- inventor
True
Background and Facts o The parties dispute who is the real inventor of technology claimed in a patent o When the technology was created, Walters consulted for Star Technologies, and Sewall was an employee of Star o Star filed an application naming Sewall and Walters as joint inventors o Walters filed an identical application asserting sole inventorship o The court gave both applications the same priority date o Walters came up with adding a new element to a CT scan o Star contacted Walters regarding a consulting relationship to develop a medical imaging system. This led to a meeting between Walters and Sewall (chip designer with Star) where Walters explained his apparatus to Sewall o Sewell’s notes confirm that Walters came up with the idea o Walters was to deliver a design for the commercially functional apparatus and Sewall was to implement Walter’s design in chip form - Walters wrote up the code to run a successful software simulation. Then, Sewall designed the hardware
Are they co-inventors?
No
Note
Flashcard