2L: Patent Law

Front 1

What do Utility patents give their owners?

Back 1

A utility patent gives it's owner rights in an invention for a limited term.

Front 2

How long is the term for a Utility patent?

Back 2

For many years, the term of a Utility patent lasted 17years from the date the patent was issued. However, for patents issued on applications filed after June 8, 1995, the term begins on the date the patent issues and lasts for twenty years from the date the application for patent was filed.

Front 3

What are some limitations on patents?

Back 3

Patents are only available for those inventions that are non-obvious, novel, and useful and are fully disclosed.

Front 4

How can a patent be challenged?

Back 4

If the PTO grants a patent, this creates an assumption that the invention meets the necessary criterion, however, a patent may be challenged in court, either through:
a) A Declaratory judgement action (if the challenger has standing) or
b) Through an invalidity defense in an infringement suit.

Front 5

What happens to appeals?

Back 5

Appeals in patent cases go to the Court of Appeals for the Federal Circuit. Reissue and reexamination procedures provide means to obtain P.T.O. review of issued patents.

Front 6

What are the acceptable subject matter for a Utility Patent?

Back 6

Patent Act $101 authorizes utility patents for "any new and useful:
1. process
2. machine
3. manufacture
4. composition of matter
5. Any new and useful improvement thereof."
A newly discovered use for a known process, machine, manufacture, or composition of matter may qualify as a patentable process.

Front 7

Can patents be granted for naturally occurring things?

Back 7

Patents may only be granted for "man-made" things, not for naturally occurring things. However, patents are not restricted to inanimate matter-- a patent may be granted for living matter that has been altered by an applicant to have characteristics it would not have had naturally.

Front 8

Can laws of nature and abstract ideas be patented?

Back 8

The Supreme Court has held that laws of nature and abstract ideas may not in themselves be the subject of a patent.

Front 9

Are computer programs patentable?

Back 9

Under the Supreme Ct rule, the Court reasoned, computer programs, which are comprised of mathematical algorithms, are not patentable by themselves. However, a process or apparatus that incorporates a computer program as one step or element may be patentable.
- In recent case decisions, the Court of Appeals for the Federal Circuit has held that claimed inventions that incorporate mathematical algorithms--- whether machines, articles of manufacture, or processes--constitute patentable subject matter if the claimed mathematical algorithm is applied to produce a useful, concrete, tangible result without preempting other uses of the mathematical principle.

Front 10

Are business methods patentable?

Back 10

Recent case law has established that business methods are patentable subject matter.

Front 11

Are medical procedures patentable?

Back 11

Medical procedures are patentable, but remedies for infringement of such patents are limited in some cases.

Front 12

Where is the Novelty standard set forth?

Back 12

The novelty standard is set forth in the Patent Act $$102 (a), (e), and (g).

Front 13

What does Subsection 102(a) say?

Back 13

Subsection 102(a) says that a patent must be denied if:
1. The applicant's invention was known by others in the U.S. before the applicant for patent invented;
2. The applicant's invention was used by others in the U.S. before the applicant invented;
3. The applicant's invention was described in a printed publication in the U.S. or a foreign country before the applicant invented
4. The applicant's invention was patented in the U.S. or a foreign country before the applicant invented.

* The focus is on the actions of persons other than the inventor/applicant prior to the date the inventor/applicant made the invention.

Front 14

When is an invention considered to be "known by others"?

Back 14

To have been "known by others" in the U.S. prior to the applicant's invention date, the invention must have been:
1. "Reduced to practice," actually or constructively, or otherwise described in a writing sufficiently to enable a person with ordinary skill in the relevant art to make it without undue experimentation; and
2. Accessible to the public.

Front 15

When will an invention be deemed "used by others"?

Back 15

To be "used by others" in the U.S. prior to the applicant's invention date, the invention must have been:
1. reduced to actual practice, and
2. used in the manner for which it was intended by its inventor.
3. Also, its use must have been accessible to the public.