LEGL 4200 Patents

studied byStudied by 0 people
0.0(0)
get a hint
hint

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.

1 / 143

Tags and Description

144 Terms

1

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

New cards
2

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

New cards
3

True/False

There are different fees based on company size for acquiring a patent

True

New cards
4

Rule: Patents generally give you the right to [answer] others from using your technology

exclude

New cards
5

The scope of a patent is to protect [answer] and [answer]

products, processes

New cards
6
New cards
7

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

New cards
8
New cards
9

All patents have a number that is called this

Patent Number

New cards
10

The date the patent becomes effective

Date of Patent

New cards
11

Rule: Must name all [answer] inventors

actual (human)

New cards
12

Company or party that owns the patent

Assignee

New cards
13

The patent’s term is 20 years from this date and this plays a significant role on if you get a patent

Filing Date

New cards
14

Rule: Must name anyone who contributed to [answer] to get a patent

conception

New cards
15

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

New cards
16

Your attorney who helps you get a patent

Patent Attorney

New cards
17

Patents are a [answer]. You publicaly disclose a new technology, and you get exclusive rights for 20 years

quid pro quo

New cards
18

This is the duty to tell the examiner of known relevant information

Duty of Candor

New cards
19

Filing a patent application and convincing the US Patent Office to grant you a patent

Prosecution

New cards
20

You can file/prosecute your own patent application or have a patent attorney/agent do it for you with this

Representation

New cards
21

Rule: Must be a patent attorney or patent agent to [answer] a patent for someone else

prosecute

New cards
22

Patents require [answer], which is a high bar to pass and acquire this protection

examination

New cards
23

• 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

New cards
24

Information or knowledge publicly available before the filing date of the application is known as this

Prior Art

New cards
25

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

New cards
26

[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

New cards
27

Written description of the invention and of the manner and process of making and using it

Specification

New cards
28

[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

New cards
29

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

New cards
30

Rule: Defendant can prove that a patent is invalid during patent [answer]

litigation

New cards
31

Rule: The patent must teach someone in the [answer] how to make and use the full scope of the claimed invention

industry

New cards
32

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

New cards
33

Someone in the field can make and use the invention without undue experimentation

Enablement

New cards
34

The [answer] end with one or more claims particularly claiming the scope of the invention

specification

New cards
35

Rule: The [answer] define the exact metes and bounds of the patent’s protection

claims

New cards
36

True/False

Rule: Must infringe one claim to infringe the entire patent

True

New cards
37

o Broadest claim o Can have several independent claims in a patent

Independent claim

New cards
38

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

New cards
39

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

New cards
40

Rule: Patents generally give you the right to [answer] others from using your technology

exclude

New cards
41

True/False

You can't secure a patent on an improvement on a prior technology

False

New cards
42

Patentable Subject Matter

101

New cards
43

Novelty

102

New cards
44

Non-Obviousness

103

New cards
45

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

New cards
46

Not previously known to the public

Novelty

New cards
47

Not an obvious variation of a known technology

Non-obviousness

New cards
48

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

New cards
49

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

New cards
50

Rule: a living organism can potentially be patented, if it is not [answer] occurring

naturally

New cards
51

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

New cards
52

Rule: Natural or physical phenomena [is/is not] patentable subject matter

Is not

New cards
53

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

New cards
54

Rule: Business methods are patentable, so long that they are not an [answer] idea

abstract

New cards
55

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

New cards
56

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

New cards
57

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

New cards
58

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

New cards
59

Rule: Absent research showing a sufficient likelihood of utility, the Patent Office [will/will not] assume utility

will not

New cards
60

True/False

Rule: Current serious scientific investigation likewise fails to show utility

True

New cards
61

True/False

Rule: No patent until show actual utility

True

New cards
62

Rule: No [answer] considerations for utility in patent law

moral

New cards
63

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

New cards
64

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

New cards
65

Rule: The prior disclosure must have been [answer]

New cards
66

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

New cards
67

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?

  1. A blog post written by another on 4/20/15 describing X

  2. 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.

  3. 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

New cards
68

Rule: You have [answer] year after you disclose to file o Note: This is for speeches/pitches/etc.

1

New cards
69

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

New cards
70

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

New cards
71

Rule: You can also claim priority for a foreign patent application filed in the last [answer] months

12

New cards
72

Rule: 20-year patent term starts at your [answer] filing

domestic

New cards
73

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

New cards
74

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

New cards
75

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

New cards
76

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

New cards
77

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

New cards
78

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

New cards
79

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

New cards
80
New cards
81

Rule: A patent/application [is/is not] prior art if filed after a public disclosure by me

is not

New cards
82

Rule: A patent/application [is/is not] prior art if the applicant obtained the technology from me

is not

New cards
83

Allows you to challenge an existing patent in a mini-trial at the USPTO

Inter Partes Review

New cards
84

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

New cards
85

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

New cards
86

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

New cards
87

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

New cards
88

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

New cards
89

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

New cards
90

Rule: If the change achieves the same goal in the same way, it is [answer]

obvious

New cards
91

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

New cards
92

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

New cards
93

Novelty is [one/one or more] reference Obviousness is [one/one or more] references

one, one or more

New cards
94

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

New cards
95

True/False

Rule: A PHOSITA will have knowledge of the relevant prior art in their field (and can thus combine it)

True

New cards
96

True/False

Rule: It wouldn’t have been obvious to combine two references if one of them specifically said don’t do this

True

New cards
97

Rule: Evidence that a product embodying the patented technology was commercially successful is evidence of [answer]

non-obviousness

New cards
98

Rule: A competitor’s copying favors [answer]

non-obviousness

New cards
99

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

New cards
100

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

New cards

Explore top notes

note Note
studied byStudied by 2595 people
Updated ... ago
5.0 Stars(5)
note Note
studied byStudied by 3 people
Updated ... ago
5.0 Stars(1)
note Note
studied byStudied by 5 people
Updated ... ago
5.0 Stars(1)
note Note
studied byStudied by 36 people
Updated ... ago
5.0 Stars(1)
note Note
studied byStudied by 6 people
Updated ... ago
5.0 Stars(1)
note Note
studied byStudied by 43 people
Updated ... ago
5.0 Stars(1)
note Note
studied byStudied by 3 people
Updated ... ago
4.0 Stars(1)
note Note
studied byStudied by 11 people
Updated ... ago
4.0 Stars(133)

Explore top flashcards

flashcards Flashcard69 terms
studied byStudied by 11 people
Updated ... ago
5.0 Stars(3)
flashcards Flashcard70 terms
studied byStudied by 3 people
Updated ... ago
5.0 Stars(1)
flashcards Flashcard94 terms
studied byStudied by 79 people
Updated ... ago
4.0 Stars(3)
flashcards Flashcard46 terms
studied byStudied by 2 people
Updated ... ago
5.0 Stars(1)
flashcards Flashcard44 terms
studied byStudied by 8 people
Updated ... ago
5.0 Stars(1)
flashcards Flashcard99 terms
studied byStudied by 5 people
Updated ... ago
5.0 Stars(2)
flashcards Flashcard128 terms
studied byStudied by 6 people
Updated ... ago
5.0 Stars(1)
flashcards Flashcard166 terms
studied byStudied by 879 people
Updated ... ago
4.0 Stars(8)