Intro to Intellectual Property--Lee PDF

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Intro to Intellectual Property--Lee...

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Professor Lee IP Outline Fall 2020 Abbreviations AAT= after arising tech AAA = After arising art BOP = burden of proof COA=cause of action Dep = dependent PA = prior art PGS=pictorial graphical sculptural PHOSA = person having ordinary skill in the art PI = patented invention PP=public policy TrdDrss = trade dress TTET= to the extent that UA = useful article

Key *EXPL = except for exceptional circumstances

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Patents!

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Patent Requirements Black’s Law definition—patent: The right to exclude others from making, using, marketing, selling, offering for sale, or importing an invention for a specified period (20 years from the date of filing), granted by the federal government to the inventor if the device or process is novel, useful, and nonobvious.

Black’s Law definition—utility patent: A patent granted for one of the following types of inventions: a process, a machine, a manufacture, or a composition of matter (such as a new chemical).

Black’s Law definition—patent claim: A formal statement describing the novel features of an invention and defining the scope of the patent's protection

Black’s Law definition—prior art: Knowledge that is publicly known, used by others, or available on the date of invention to a person of ordinary skill in an art, including what would be obvious from that knowledge. • Prior art includes (1) information in applications for previously patented inventions; (2) information that was published more than one year before a patent application is filed; and (3) information in other patent applications and inventor's certificates filed more than a year before the application is filed. The U.S. Patent and Trademark Office and courts analyze prior art before deciding the patentability of a comparable invention.

Comprising—(an open transition) claims using this term cover devices that include all the listed elements plus any additional elements.

Consisting of—(a closed transition) does not cover devices that include additional elements Consisting essentially of—limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of ht reclaimed invention

Conception—the moment of invention

Black’s Law definition—letters patent: A governmental grant of the exclusive right to use an invention or design.

Code 1952 Act: 35 USCA §§ 101–103

Policy Encourage invention and innovation by protecting inventors ability to make money from their work while encouraging them to share it with society

Cases Rosarie v. National Lead Co. In re Hall Egbert v. Lipman Graham v. John Deere City of Elizabeth v. Pavement C

KSR international Co. v. Teleflex Inc. Brenner v. Manson Mayo Collaborative Services v. Prometheus Lab Inc.

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Important Concepts, Hypos, Examples and Explanations: Duration: 20 years

AIA Requirements (SUNND) [After March 2013] Patentable subject matter § 101

(Rarely) inventive applications of excluded topics (SCOTUS decision) A natural law or natural phenomena must be sufficiently added upon or transformed in order to make an idea, formula, mechanism, or test patentable. (Mayo collaborative v. Prometheus) [Alice test: (1) is the patent for excluded SM? (2) if so is there an inventive concept that makes it significantly more than a patent on the concept]

Utility § 101 Credible utility—work for intended purpose Specific and substantial utility—serve a particular practical purpose (Today) ✓if it only works in an experimental setting & has no proven use unless… Absolutely no practical utility Inventions pertaining to life sciences—courts ask if laboratory promise enough it is for drugs Chemical inventions & discoveries—the existing form of the chemical process and product must confer a specific benefit on society. (Brenner v. Manson) Novelty § 102 First to file subject to a grace period 1952 regime: first to invent if it is filed in a timely manner Effective filing date: the filing of a Has not been preceded in identical form in the public prior art patent application that establishes priority under U.S. law. Includes, Before the effective filing date it cannot be certain applications filed in foreign Patented Described in a printed publication In public use patent systems that are by virtue of compliance with international On sale Otherwise be available to the public treaties and U.S. law granted the benefit of a U.S. filing date. Exceptions: Disclosures made by the inventor(s) 1 year or less before the effective filing date Disclosures appearing in applications and patents by the inventor(s) A prior art reference cannot anticipate the invention A single prior art reference must disclose every element of the invention Nonobviousness § 103

THE MOST IMPORTANT REQUIREMENT—The ultimate condition Cannot merely be a trivial step forward in the art Based on subject matter and prior art, the invention can not have been obvious at the time of invention was made to a person having ordinary skill in the art Sometimes it is permissible to analyze a combination of ideas from diff prior art sources A court reviews: differences btwn prior art and The Claims, level of ordinary skill in the art, secondary considerations (ex: commercial success, long felt but unsolved needs, failure of others) surrounding the origin of the subject matter sought to be patented Chemical compounds: focus on ID of the lead compound (“a natural choice for development efforts)

Disclosure § 112 (see patent claims: disclosure section)

5 1952 Regime: not novel (nor patentable) if… Known or used in U.S. Work done openly in the ordinary corse of activities of an employer (Rosaire v. National Lead Co.) Patented/described in a printed publication anywhere before “invention” (statutory bar) Published in a thesis (In re Hall) Public access is the touchstone Secret prior art: previously filed applications Invention was described in (1) a published patent application by another filed in the US (2) patent granted on an application for a patent by another filed in the us

In public use or on sale in U.S. more than 1y before application (statutory bar) In use for more than 2 years (Egbert v. Lippmann) Even if:

By only one person

It was not public knowledge or publicly available

Exception: testing (City of Elizabeth v. Pavement Company) Relevant factors (any can be dispositive) Necessity/reasonably required Amount of control by inventor Nature of invention Length of test period Systematically performed Continually monitored by inventor Nature of sales contracts Sale/purchase Awareness of purported testing in the context of a sale is a critical attribute of experimentation Failure to communicate ⇧ = view as commercial transaction (case in notes p194) Secrecy obligation Records of experiment kept Degree of commercial exploitation Abandoned Late filing in the US (patented in another country more than 1 year before an application is filed in the US) Interference: An administrative proceeding Derivation (inventor did not invent it themself) in the U.S. Patent and Trademark Office to determine who is entitled to the patent when two or more applicants claim the same invention, or when an application interferes with an existing patent.

First to invent??? Inter partes proceedings During the course of an interference another inventor involved therein establishes that the invention was made by them and was not abandoned suppressed or concealed Ex partes prosecution/invalidity defense The invention was made in this country by another who has not abandoned, suppressed, or concealed it Determining priority Dates of conception and reduction to practice (reasonable diligence) Disclosure Also included best mode in addition to written description and enablement !

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Patent Claims: Disclosure Black’s Law definition—Embodiments: the way inventions can be deployed

Code 35 USCA § 112 Claim formats (b) Conclusion—specification conclude with 1/+ claims particularly pointing out and distinctly claiming the SM the invention regards as the invention (c) Form—claim may be ind or dep or mult dep (d) Reference in dep forms—sub to subsection (e) dep form claim shall contain a ref to a claim previously set forth and then specify a further limit of the SM claimed. Shall be construed to incorp by ref all the limits of the claim to which it refers (e) Reference in multi dep form—shall contain a ref, in the alt only, to more than one claim previously set forth and then specify a further limit of the SM claimed. Shall not serve as a basis for any other multi dep claim. Shall be construed to incorp by ref all limits of the particular claim in relation to which it is being considered (f) element in claim for a combo—an elem in a claim for a combo may be expressed as a means or step in performing a specified function w/o the recital of structural material or acts in support thereof and such claim shall be construed to cover the corresponding structure material or acts described in the specification and equivalents thereof

Cases O’reilly v. Morse Incandescent Lamp Patent

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Important Concepts, Hypos, Examples and Explanations: Patentees want their patents to be interpreted as broadly as possible to cover a wide range of potential infringements (they also want them upheld and a too broad patent will not be) Disclosure § 112 Patient specification must convey Detailed written description (i.e. demonstrated possession at the time of filing) Enablement (The specification enables a person w/ ordinary skill in the art to make and use the invention w/o undue experimentation)

Can only claim inventions/processes described & disclosed in application specification (Morse) To claim embodiments and subsets: Patentee must possess the inventive principle & provide adequate teaching and support for the full range claimed Test for enablement: (1) quantity of experiment necessary (2) amount of direction or guidance presented (3) presence/absence of working examples (4) nature of the invention (5) state of the prior art (6) relative skill of those in the art (7) predictability of the art (8) breadth of claims (would someone with ordinary skill in the art be able to make and use it without undue experimentation) encompass a particular application of a fundamental principle, pre-exempt the principle itself “(1) it is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing” (A useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101—but too ridged given the broad statutory definition in § 100(b) of “process”)

Claim construction—Define boundaries of property rights conferred by patent (metes & bounds) **An essential step in infringement analysis** Peripheral claims: Use linguistic formulations (rather than references to specific improvements to delineate the metes and bounds of the claimed invention. Fence posts that attempt to define the outer bounds of the patent right Specification defines the invention: Names all parts or components, describes how the work, Illustrates how they work together to perform intended function Types Independent claims: do not refer to other claim(s) Dependent: refers to other claims Language “Comprising”—open Cover devices that include all the listed elements plus any additional elements “Consisting of”—closed Does not cover devices that include additional elements “Consisting essentially of” Limits scope to specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention

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Patent Prosecution—Application Process Black’s Law definition—Prosecution: The process of applying for and pursuing a patent through the U.S. Patent and Trademark Office and negotiating with the patent examiner

Rejection: A patent examiner's finding in an office action that a claim in an application is unpatentable

Final rejection: A patent examiner's finding, in a second or subsequent office action, that a claim in an application is unpatentable on the merits.

Continuation: A patent application that is based on the same disclosure and claiming the same invention as a rejected parent application but containing some change in the scope of the claims

Continuation in part: A patent application filed by the same applicant during the pendency of an earlier application, repeating a substantial part of the earlier application but adding to or subtracting from the claims.

Code §§ 111(b), 132

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Important Concepts, Hypos, Examples and Explanations: Application (or provisional (placeholder) app that must become a full application w/in 1 year) Containing Specifications: Summary Drawings Claims: one or more at end of specifications Oath: declaring the inventor actually invented what is described in specifications Filing fees Rejection Examiner must: State reasons for each with Info and reference to aid the applicant in Judging whether to continue prosecution or overcome the rejection Examiner has burden to show why the patent should not be issued Traverse or acquiesce in rejection Applicant can contest the rejection Final rejection (not actually final) Ways to respond Continuation or amendment (most typical) Continuation Resets the process Can retain the benefit of initial filing date Continuation in part Adds new matter to the specification Does not retain benefit of initial filing date Any info carried over does Amendment When some claims are allowed and others rejected Cancels the rejected claims Puts remaining claims in condition for allowance Rejected claims may be carried over into separate continuation application File an appeal with the Patent Trial and Appeal Board (admin tribunal w/in PTO) ⇧ If applicant feels continued prosecution would not be worthwhile (ex: there are clear disagreements with the examiner) Acceptable claims are enforceable as soon as original slimmed down app is allowed to issue patent!

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Legal Rights of Patent Holder Black’s Law definition—Section 337 investigation: An in rem proceeding conducted by the U.S. International Trade Commission to determine whether products imported into the United States infringe intellectual-property rights or otherwise constitute unfair competition under federal law

Code U.S.C. § 154(d) 19 U.S.C. § 337

Important Concepts, Hypos, Examples and Explanations: After publication but before issuance Certain rights if . . . Infringer has actual notice fo the patent Published claims are substantially identical If ⇧ inventor can recover a reasonable royalty Injunction is not an option Once granted Post grant review proceeding Ensure the the patent was properly issued Declaratory relief action Companies that reasonably fear being sued for patent infringement can file declaratory judgement actions seeking to est that the patent at issue is invalid or that their conduct does not infringe the patent Typically met with infringement counterclaims Section 337 investigation Right to block importation of products that infringe the patent

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Patent Infringement Patent infringement is a tort

Black’s Law definition—Prosecution-history estoppel: The doctrine limiting a patent-holder's invocation of the doctrine of equivalents by eliminating from the claims those elements that the holder surrendered or abandoned during the prosecution of the patent. Contra proferentem doctrine: when interpretation of docs ambiguities are construed unfavorably to the drafter

Code 35 USCA §§ 271 § 112

Cases Larami Corp v. Amron Graver Tank v. Linde Air Products Co. Global tech appliances inc v. SEB s.a

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Important Concepts, Hypos, Examples and Explanations: Direct infringement analysis: infringement if device/process “reads on” the claimed invention There must be at least one act of direct infringement Literal infringement: Without authority, makes/sells/offers to sell/imports a patented invention in the US Must prove—infringer carries out every element of the claimed invention (4/5 ≠ literal)

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Non literal infringement: Doctrine of Equivalents (DOE) Prevent taking the essence of the invention for SM that was disclosed but not claimed Triple identify test: equivalencies may be found where the accused produces ——————————— Substantially (1) same function, (2) the same way (3) the same result Whether a substitute element matches the function & result of the claimed element vs plays a substantially different role

DOE infringement Applies only to exceptional cases to obtain coverage of SM in prior art an accused infringer who merely practices the prior art ✓ If PA art did not anticipate or render the hypo claim obvious, § 112(f) equivalents and DOE: after-arising tech (AAT) Means + function claim that isn’t literally infringed can be infringement under DOE if either: Function (not structure) was equivalent but not identical The accused device contains equivalent after-arising tech t Prosecution-history estoppel Doctrine Presumption: amendments to narrow a claim limitation later stretch that limit. to reach AAT Exceptions: Unforeseen equivalents, tangental amends, amends for “other reasons" Contra proferentem doctrine Reverse DOE: A device is so far changed in principle from a patented article that it performs the same or similar function in a substantially different way but nevertheless falls within the literal words of the claim the—DOE may be used to restrict the claim and defeat the patentees action Indirect infringement Inducement § 271(b) “whoever actively induces infringement of a patent shall be liable as an infringer” Behavior that omits any direct making using selling of PI (aids and abets) Requires direct patent infringement Inducer may be liable for acts that do not themselves directly violate the patent statute Δ's belief as to the validity does not have any bearing on induced infringement Intent is required even though not mentioned in the statute (Global tech appliances inc v. SEB) Standard is willful blindness (not deliberate indifference to a known risk that a patent exists)

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Patent Infringement Defense Black’s Law definitions: Legal estoppel: such as an estoppel resulting from a recital or other statement in a deed or official record, and precluding any denial or assertion concerning a fact. Equitable estoppel: promissory estoppel Grantback: A license-agreement provision requiring the licensee to assign or license back to the licensor any improvements that the licensee might make to a patent or other proprietary right. (common in agreements among independent patent holders to bundle their patents—patent pool—have been treated leniently by courts)

Statutes § 282(b) § 271 § 271–1988 Patent Misuse Reform Act No patent owner otherwise entitle to relief for infringement or contrib infringe of a patent shall be de denied relief or deemed guilty of misuse/illegal extension of the patent right by reason of having done: Refused to license Conditioned license on acquisitor of a license to rights in another patent or purchase separate of the product ⇧ Unless patent owner has market power in the relevant market for the patent or patented product on which the license or sale is condition Sherman Act § 1: Restrictions to control price the licensee sells products made using the process or equipment are illegal per se under

Cases Motion picture patents Co. V. Universal film manufacturing CO.

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Important Concepts, Hypos, Examples and Explanations: Non infringement Patent invalidity (there is a presumption of validity) Assignor estoppel: Patent seller cannot attack validity in subsequent litigation (EXPT* waiver/duress) No licensee estoppel: bars licensees from challenging validity SCOTUS: PP free competition in unpatenta...