Patent Law Outline 3272020 PDF

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Patent Law Outline:

1) CLAIM DRAFTING JUST TRY TO CLAIM THEIR INVENTION. WHAT THEY DID THAT WAS NEW. Formatting: (Goal is to define the boundaries of your property rights). -Single sentence requirement. Can’t have to independent clauses. 0) Preface/introduction: “what I claim is… (preferable) -doesn’t have to be ornate. 1) Preamble: “a bacterium from the genus X…” -noun that is the object of the sentence -giving purpose doesn’t limit it to only that purpose unless the language is necessary or essential. 2) Transition word: “containing therein *presumption of open format unless there is some limiting language. -comprising = (open claims, more broad language) includes the elements described thereafter and anything that includes each those elements PLUS anything else. Open class. -consisting essentially of = (in between) includes elements described thereafter and anything that includes those elements AND addition of elements that don’t change the essential function/properties of the compositon. (ex: coloring dye added on). -consisting of = (closed claims, VERY NARROW LANGUAGE) includes nothing but the things described after. *better for unpredictable fields, where slight changes could change properties. -“By causing” (makes sense for methods). -‘wherein the improvement comprises’ for improvement patents. (Jepson claims). 3) BODY: Describe the elements, sub-elements, and how they connect -Dependent claims: reference prior claim, incorporate all its limitations by reference + add more. -further transition,=>sub-elements. -“wherein” to change subject. “Part C, attaching said part A; wherein said pt A is made of gold” POTENTIAL ISSUES: -The broader the claim, the harder it will be to patent the invention. *NEED an antecedent basis in the specification, prior claims, or PHOSITA knowledge. -New elements introduced w/ “a/an X” -Then when referred to again, “said X” - “said backpack” referencing a previous backpack

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Watch out for words: Relative words like: fast, slow, long, short, tall, wide, perfect, complete, thin, strong, flat ect. Unless relationship is X is shorter than Y

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Never use SHOULD (indefinite) “A band of material with interlocking ends” – should have said, a band of material with interlocking material on left end, and the right other end

-Means-plus-function elements: cover any means for performing the function. *use the word “means” => presumed to be M+F element. UNLELSS M+F if a specific structure is described in the claim. -cover only the means disclosed in the specification + equivalents. -have to ID a means, even if clear to PHOSITA. -make the entire claim narrowly construed. -Claim must recite more than a single element. (‘claim for a combination’) Ex: NO – “widget comprising means for fastening A to B” Ex: YES – “widget comprising A, B and a means for fastening A to B” -Can recite two+ elements, both of which are means+function. Ex: ‘widget comprising means for performing function X and a means for performing function Y’ -Product-by-process claims: interpreted as drawn to the product, but still limited by the process steps. (often for chemical inventions, too hard to describe the chemical itself). -Improvement claims (Jepson claims): “In X … an improvement comprising Y and Z” -(Group selection claims) Markush claims: “A comp comprising ABC, where C is selected from the group consisting of X Y Z” -Random tips -try drafting multiple levels -Thing = object; article; apparatus; device; member; medium; mechanism. Means* -Definiteness (see written description below). *maybe suggest defensive publishing instead of patent? (though not in my best interests as your atty) OTHER *check infringement section for potential issues. *claims don’t have to enable, obviously. Examples: 1. What I claim is, An apparatus, comprising; An eraser attached to one end of the pencil; [[and]] a light attached to the center of the pencil; and a removable cap attached to one end of the pencil Chakrabarty Example - What I claim as new and desire to secure by Letters Patent of the United States is:

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A bacterium from the genus Pseudomonas containing therin  at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway

NOVELTY -

Novelty looks to ALL prior art- There is no analogous art limitation. We require strict identity

35 US Code §102: (a) Novelty: Prior Art: - A person shall be entitled to a patent unless(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public BEFORE the effective filing date of the claimed invention. (one time period prior art) Rationale: must give (and not take away) something that the public didn’t already have. 1. DECIDE: Pre or Post AIA: Filed ON or after 3/16/2013 AIA Applies (skip ahead to AIA), If BEFORE  Pre-AIA Pre-liminary: - Burden is on challenger/PTO to prove lack of novelty - For issued patents under attack, challenger must corroborate oral testimony (Barbed Wire SCOTUS) Deprivation?: (Pre AIA) - §102(f): No patent if didn’t actually invent the subject matter sought to be patented o Corroboration required 1. Pre- America Invents Act (but also applicable to today): Rule: If anything below happens either (1) before the invention date, or (2) more than one year before filing date (grace period), then it is prior art- and bars the current patent

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In the US, known…by others (102(a)) In the US used by … others (102(a)) Printed Publication- anywhere in world Public Use, or On Sale- only if took place in US (is it prior art)

References under 102(a)(1)

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Five Categories of References o (i) Printed Publication (§ 102(a)) Or in this OR a foreign country – patented or described in a Printed Publication 102(a) o Printed: expansively defined. Anything writing/drawing/website- maybe not nondistributed but presented slide show o Publication: Whether interested members of relevant public (public accessibility key (Jockmus, Constant v. AMD) COULD obtain info (In re Hall, present in small library in Germany)  Through customary research methods. Broad standard- easy to find publication  Report in private library- not printed publication, public’s ability to access is unclear – Northern Telecom v. Datapoint  Indexing: i.e. subject matter division is sufficient- even if $ is required for journal  Expect to try several (Lister), index cards held uncatalogued and held in shoe box in chemistry library not sufficiently indexed – Cronyn  Bayer- Thesis not yet indexed is NOT prior art  Distribution: can be sufficient- if can be found by customary search methods  Or Published  Klopfenstein Factors: o Longer duration/higher prominence of display o Higher expertise of target audience o Existence of reasonable expectations that the material would not be copied o Simplicity of material displayed could have been copied  Also Defensive Publications: if parties do not want to patent their developments, and don’t want others to o

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(ii) Patented  (1) First Question: Does the foreign patent actually disclose my client’s invention?? –  Ex. Reeves Bro: patent was listed by name only in publication but perhaps didn’t disclose (invention)?? or index to qualify as publication  Almost every patent qualifies as prior art.  All US patents qualify as prior art at time of filing  Foreign patents will be published prior to issuance,  qualify as “printed publication” prior art  Still has to be INDEXED! (iii) Public Use (in USA – pre-AIA)  Degree of Public-Ness  Public vs. Private Use o Egbert v. Lippmann

Gave corset steels to friend in 1855. Applied for patent in 1866. Court: In 1855, Use = public use. o If not free and unrestricted access, then private use (not public) – Moleculon Research Corp. v CBS  Nichols never gave the invented wooden toy over for unrestricted use Single Use Rule For businesses: the use of a machine or process in factory for commercial use- is “public use” –, Electric Storage Battery v. Shimadzu o Invention must be operational to qualify for single use rule (Secret Public Use) Trade Secrets: - Metallizing Engineering o Public Use =  (1) Invention was exploited in public way, (without regard to whether the invention itself was publicly disclosed) AND  (2) Inventor/patent applicant must theoretically have had access to the invention. o Result: An inventor is probably barred from seeking a patent after exploiting trade secret for years. –  Duffy’s opinion: the TEXT of the statute says otherwise available to the public- does not include trade secrets!! Exception for Experimental Uses – City of Elizabeth v. American Nicholson Pavement o Rule: Good faith testing of invention’s operation is NOT public use. o Nicholson constructs portion of pavement on public street in Boston- monitoring traffic to see if road survives o It does- so he files for patent. 

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(iv) On Sale- Unchanged meaning under new AIA, see Helsinn  Degree of Commercial Exploitation, loss of right to patent when an invention has been sold or offered for sale more than one year before the application filing date.  Two conditions must be satisfied: Pfaff v. Wells  (1) the invention must be the subject of a commercial offer for sale: and  (2) the invention must be ready for patenting o Satisfied either:

(1) invention may have already been actually reduced to practice, OR – Pfaff  Qualify as an offer in a general contact law sense.  (2) the invention may have at least been reduced to drawings – that are sufficiently specific to enable a person having ordinary skill in art to practice invention  Detailed drawings Pfaff- sufficient One scenario (in Pfaff) : inventor’s sale of an invention to a third party who is obligated to keep invention confidential- can qualify as prior art **Does not have to be reduced to practice (physically constructed/tested) Pfaff 

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Exception:  Experimental Use – same as above (v) Otherwise available to the Public  We don’t know what this means really. 

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Where do Sherring and Tilghman v. Proctor go? In terms of anticipation?

EXCEPTIONS TO ANTICIPATORY PRIOR ART: Anticipation Generally: – Anticipation: (1) Anticipation requires the description in a single prior art reference of every element of a claimed invention. (2) Analysis SPLIT IN LAW: (1) Anticipation requires that the prior art have been appreciated, when the invention was created – Seaborg, Tilghman - SCOTUS (2) Anticipation does not require appreciation. If the claims would cover an activity that was in prior art, then claim cannot be allowed, because claim would detract from public domain – Schering (3): Enablement Standard for Anticipation - Anticipation must be claimed with sufficient detail that a person of ordinary skill in the art could make what is described in the prior art reference, without undue experiementation. - Enablement for anticipation does NOT require a known use! – Hafner -

Broccoli Sprouts Case:

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Researchers “discovery” of eating broccoli prevents cancer, was anticipated. Fed. Circ. Cites 2939 BC Emperor of China recorded the use of health giving sprouts.

Caselaw: Accidental anticipation: - Seaborg. o “I claim Element 95” o Problem, Fermi had already produced element 95 in a nuclear reactor – but didn’t know it o Court: Even if element 95 was produced by Fermi, it was not identified, nor could it have been identified – so not anticipated. - Tilghman v. Proctor (SUPREME COURT) o Earlier steam engine process of breaking down fat on the pistons was NOT anticipation – of chemical fat break down method o Fats were unwittingly produced – not anticipation, no recognition of prior art = not anticipation - Edison Elec. Light v. Novelty Incandescent o Edison improved connection and put junction of wires inside glass o Prior art had junction outside glass- occasionally spilled over and formed patented product o Court: Those old products were ACCIDENTAL OCCURENCES, and not anticipations  Those accidental occurrences give nothing to the world. - Schering Corp v. Geneva Pharma (FED CIRCUIT) o Rejected inherent anticipation requires recognition of prior art, recognition of prior art is probably NOT necessary. (SCOTUS DISAGREES, in Tilghman) o If granting patent protection on disputed claim, would allow the patentee to exclude public from practicing prior art, then that claim is anticipated New Statute AIA EXCLUSIONS: 102(b)- [for Printed Publications, Public Uses ect.] Grace Period Exceptions (1) Disclosures made 1 year or less before (called grace period) the effective filing date of the claimed invention. (A) Any “disclosure” attributable to (obtained directly or indirectly from) the applicant (within 1 year of effective filing date) (B) Disclosures by others made belatedly after a “public” disclosure of the applicant’s work (within 1 year of effective filing date) 102(b)- [for Disclosures in earlier US patent applications by others] (2) No de jure time limit (A) 1st filled app is attributable to (obtained directly or indirectly from, ex. nd stolen) 2 filer

(B) 1st app filed belatedly after public disclosure by 2nd filing applicant (de facto one year time limit) (C) Common assignee

(A) Type Exceptions: Pre-filing disclosures made by inventor/applicant made within 1 year of filing dateshall not be prior art. (B) Type Exceptions: Two disclosures of same invention. Functions sort of as a “first to disclose” system. Pre-filing disclosures of others, will not be prior art

Hypos on (A) Grace Period Events:

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Publish Article Disclosing Invention, May, Year 1 AA files app. June 1, Year 1. Result: Article removed from prior art under (b)(1)(A)- within one year

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April Year 1, Dick stole notes- placed invention “on sale” AA files app. June Year 1. Result: Removed from prior art under (b)(1)(A)- disclosure attributable to applicant

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Jan, Yr 0, Dick steals invention, places it “on sale” AA files app. June 1, Yr 1 Result: Dick’s “on sale” even cannot be removed from prior art under b(1)(A) because one year time limit under (b)(1)

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Jan Yr. 0, Dick Steals notes and files US patent application AA files US application June 1, of Yr 1. Result: Dick’s application is removed from prior art under b(2)(A), no time limit under (b)(2)

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Hypos on (B) Grace Period Events- AIA first to disclosure favoritism - 2nd to file, but first to disclose, can beat 1st to file. 1. -

BB discloses invention in article Jan 1, Yr. 1 Feb Yr. 1, Irene publishes article on same subject, based on own research March 1 Yr. 1, Irene files a patent application based on her own research BB files application on Dect 31, Yr. 1. Result: Irene’s article gets removed from prior art under (b)(1)(B) o Irene’s application is removed under (b)(2)(B). Note: First filer Irene loses to second filer BB o Both cases: Irene’s independent work gets excluded from prior art because BB made earlier public disclosure.

Prior-Art

One-time-period prior art

Two-time-period prior art

(a)(1)

(a)(2)

     Exceptions “Grace Period” Limited to 1 year only for b(1) and effectively limited to 1 year for (b)(2)(B)

Patented Art Printed Publications Public Use “On sale” Otherwise available to the public

(b)(1) – One year time clock 

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A – Attributed to the applicant (directly or indirectly)- then can pull out of prior art B – Belated. Made by others, belatedly, after a “public” disclosure by the applicant. – Allows you to take out prior art, disclosures by others made AFTER public disclosure of the applicant’s work. o Incentivize disclosure

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Disclosed in a U.S. patent application, filed by another, that is eventually published or issued.

(b)(2) – no time limit really 

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A – 1st filer’s application is attributable to 2nd filer. B – 1st filed belatedly after public disclosure of 2nd filer. C – common assignee. Same company is assignee on both patents. (same company different divisions filing different times)

If you have prior art in (a)(1) – you need exception in (b)(1) to pull it out of prior art If you have prior art in (a)(2) – you need exception in (b)(2) to get out International Considerations: - Don’t rely on grace period in US. Other countries are substantially less generous than US. - PTO’s current interpretation of grace period imposes an identical subject matter requirement. Subject matter sought to be excluded from prior art, must be IDENTICAL to subject matter attributable or previously disclosed by applicant.

NOVELTY UNDER OLD 102 (Pre AIA) Statute: Steps in Analysis: (1) Focus on question, the identity of the applicant.

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What exactly is the question being asked? Ex. Question often: Can person A get patent rights in light of activities of persons B, C, D ect. Person A is the applicant

(2) Derivation under §102(f). The applicant is not entitled to patent if “did not himself invent the subject matter sought to be patented” -

Big Rule!: There’s no 102(f) bar unless the entire invention was copied from someone else- hints and suggestions not sufficient – Agawam Rule Even if entire invention is not copied, the discrete parts that are copied from someone else became prior art for analyzing obviousness under §103

(3) Excessively early foreign application under § 102(d) - Steps: o (1) First, ask whether the applicant filed a patent application in a foreign country more than 1 year prior to the actual U.S. filing date. (i.e. has there been legal malpractice in filing outside the one-year Paris Convention time period) o (2) Ask whether the foreign application resulted in a foreign patent that issued prior to the US filing date. (applicant has been unlucky in having the foreign patent office move quickly) o Applicant is barred from US patent if answers to both questions is YES (4) Abandonment of patent rights under § 102(c) - Applicant is barred from getting patent in either: o (1) Express abandonment. The applicant previously abandoned the right to patent by dedicating the invention to the public o (2) Trade Secret. The applicant abandoned the right to patent by practicing the invention as a trade secret for too long of a period of time

(5) Prior art under § 102(b) -

1. Calculate the date one year prior to actual US filing date (the 102(b) critical date)). 2. Include in prior art all patents and printed publications, without geographic limitations occurring before the critical date. 3. Include in prior art all things that were put in “public use” or placed “on sale” within the US before the 102(b) critical date

(6) The applicant’s invention date. Each of the remaining portions of the statute (a), (e), (g) require knowing applicant’s invention date. Calculated using following rules: -

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(1) Start with applicant’s effective filing date (either the earliest US filing date, or earliest Paris Convention filing date) as “constructive reduction to practice date and presumptive date of invention” (2) If applicant actually reduced invention to practice prior to filing date (the constructive reduction to practice), then move the date of invention back to date of reduction to practice o Result of these above rules: place the date of invention at earlier of actual or constructive reduction to practice (3) If applicant has proof of “conception in detail” occurring on a date prior to reduction to practice date calculated using rules (1), and (2) then applicant MAY be able to move date of

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invention earlier in time using rule (4), but the date of invention can never move before the date of conception in ...