Studied by 0 PeopleTags & Description
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