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102 Cards in this Set
- Front
- Back
- 3rd side (hint)
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List the Incentives for Patents
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i. Invent
ii. Disclose iii. Commercialize iv. Design Around (Reverse Engineering) |
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Types of patents
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˃ i. Utility Patent – Protects the way an article is used
˃ ii. Design Patent – Protects the way an article looks ˃ ˃ 1. 14 Year term with no renewal ˃ iii. Plant Patent – Protects distinct and new variety of plant |
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Name the three basic statutory "patentability" requirements.
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3 Main Sections
§ 101(Useful) , § 102(Novelty) , § 103 (Obviousness) |
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What are the Step Approach for testing Non-Obviousness?
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˃ Determine the scope and content of prior art
˃ Determine the level of PHOSITA needed ˃ Determine difference in subject matter |
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What are the Statutory Procedural Requirements under 35 USC § 112 are
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˃ Enablement
˃ Written Description ˃ Best Mode |
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What is a Continuing Application?
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A type of application allowing the inventor to keep the original filing date and have pretty much the same technology.
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When is the Enablement for a Continuing Application?
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The Enablement is at the time time of the original filing date.
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Requirements for Continuing Applications
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1. Must be filed while parent application is still pending,
2. At least one inventor must be common to the two applications; AND 3. Text of second application must refer to the first. |
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What is a Continuation-in-part applications
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Some subject matter in common with parent but also some new subject matter
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What is a Divisional applications?
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Coming out of first application but diverges from initial patent.
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What is a reissue and what are the requirements for an acceptable reissue?
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Allows the patent owner to correct mistakes
i. Mistake to be corrected must be 1. Unintentional or Unavoidable 2. Without deceptive intent 3. Deemed by owner to make patent wholly or partially invalid 4. If seeking to broaden patent protection, must be done within 2 years after issue. 5. The doctrine of Intervening Rights protects competitors during this period. |
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What are Intervening Rights?
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When the reissue patent claims and the original patent claims are different, a person may acquire “intervening rights” for activity occurring after the original patent issues and before the reissue patent
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What is the Recapture Rule?
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Deliberate surrender of a claim to certain subject matter during original prosecution can bar “recapture” through a reissue patent.
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What is a Reexamination and what are the requirements?
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A request to reexamine an issued patent in view of prior art
1. Prior art must be either a patent or printed publication 2. Within 3 months of a request, Commissioner must determine if there is a question of patentability. 3. Commissioner’s decision is final and nonappealable; 4. Patentee has two months to reply; 5. A reply must be served on person who requested; 6. That person has two months to reply; 7. Patent owner can amend claims to overcome prior art |
General
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What is a Trade Secret in AR?
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Information, including a formula, pattern, compilation, program, device, method, technique, or process, that:
[1] Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and [2] Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. |
Trade Secrets
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Differences Between Patent and Trade Secret Law with regards to where they originated.
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Historically statutory vs. Historically common law (recently statutory)
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Trade Secrets
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Differences Between Patent and Trade Secret Law with regards to disclosure vs. confidentiality.
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Favor disclosure vs. Favor Confidentiality
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Trade Secrets
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Differences Between Patent and Trade Secret Law with regards to term.
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Limited term (20 yrs from date of filing) vs. Potentially unlimited term
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Trade Secrets
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Differences Between Patent and Trade Secret Law with regards to Fed/State Law.
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Federal law vs. State law
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Trade Secrets
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Differences Between Patent and Trade Secret Law with regards to protection.
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Protects owner against legitimate independent development vs. No protection for independent legitimate development
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Trade Secrets
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What is "Proper Means" with regards to Trade Secret?
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No protection exists when one discovers the trade secret by “proper means.”
(Rest. Torts § 757 cmt f) Proper Means include: 1. Discovery by independent invention; 2. Discovery by “reverse engineering” 3. Discovery under a license from the owner of the trade secret; 4. Observation of the item in public use or on public display 5. Obtaining the trade secret from published literature. |
Trade Secret
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How do you determine whether information is a trade secret?
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i. the extent to which the information is known outside the business;
ii. the extent to which the information is known by employees and others involved in the business; iii. the extent of measures taken by the company to guard the secrecy of the information; iv. the value of the information to the company and to its competitors; v. the amount of effort or money expended by the appellee in developing the information; and vi. the ease or difficulty with which the information could be properly acquired or duplicated by others. |
Trade Secret
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Misappropriation means:
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Under § 4-75-601(2):
Acquisition of a trade secret of another by a person who > [1] knows or has reason to know that the trade secret was acquired by improper means; OR > [2] Disclosure or use of a trade secret of another without express or implied consent by a person who: > > 1. Used improper means to acquire knowledge of the trade secret; OR > > 2. At the time of disclosure or use, know or had reason to know that his knowledge of the trade secret was: > > a. Derived from or through a person who had utilized improper means to acquire it; > > b. Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; OR > > c. Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; OR > > 3. Before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake; |
Trade Secret
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What is an Injunctions with regards to Trade Secrets?
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§ 4-75-604
i. Actual or threatened misappropriation may be enjoined. ii. Upon application to the court, an injunction shall be terminated when the trade secret has ceased to exist; however, the injunction may be continued for an additional reasonable period of time in order to eliminate commercial advantage that otherwise would be derived from the misappropriation. iii. If the court determines that it would be unreasonable to prohibit future use, an injunction may condition future use upon payment of a reasonable royalty for no longer than the period of time the use could have been prohibited. iv. In appropriate circumstances, affirmative acts to protect a trade secret may be compelled by court order. |
trade secret
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Explain Threatened Disclosure with regards to Trade Secrets.
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Injunctive relief should be granted to protect trade secrets where there is a belief, not simply that future acts are threatened, but that such acts will in all probability be committed.
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trade secret
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Explain Inevitable Disclosure with regards to Trade Secrets.
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Defendant cannot practice its business without using the trade secret.
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trade secret
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Types of Remedies
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[1] Past Infringements - includes money and interest.
[2] Remedies That Prevent or Deter Future Infringement: Injunctions, Punitive Damages, & Attorney Fees |
Remedies
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Money Damages
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Lost profits if patentee and infringer compete in the same market. If not, then patentee can receive "reasonable royalty."
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Remedies
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LOST PROFITS
=========== What are the requirements? |
Generally: Lost profits are profits that are actually lost, that actually would have been made. In other words, "but for" the infringement, the profits would have been made.
Patentee Must Prove: [1] Demand for the patented product; [2] Absence of acceptable noninfringing substitutes; [3] His manufacturing and marketing capability to exploit the demand; and [4] The amount of profit he would have made |
Remedies
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LOST PROFITS
=========== What are the Limitations? |
Usually allowed if the Plaintiff and Defendant are:
[1] in the same business [2] only foreseeable damages; [3] only go back 6 years; [4] Invention must say "patent-pending" if not yet awarded. |
Remedies
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Permanent Injunctions
================ What is it and what are the factors? |
Injunction that lasts for the remaining life of the patent
Plaintiff must demonstrate: [1] That it has suffered an irreparable injury; [2] That remedies available at law, such as monetary damages, are inadequate to compensate for that injury; [3] That, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and [4] That the public interest would not be disserved by a permanent injunction |
Remedies
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Preliminary Injunctions
================ What is it and what are the factors? |
Plaintiff must demonstrate
[1] Reasonable likelihood of success on the merits of the case; [2] That remedies available at law, such as monetary damages, are inadequate to compensate for that injury; [3] That, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and [4] That the public interest would not be disserved by a permanent injunction |
Remedies
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Punitive Damages -
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Punitive Damages § 284 – usually done with willful infringement
2 Step Process [1] Clear and convincing evidence that infringement was willful; [2] Determining from totality of the evidence that the damages should be increased (and by how much) |
Remedies
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Factors Consider When Awarding Attorney Fees?
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[1] Clear and convincing evidence that a case is exceptional
examples: willful infringement, inequitable conduct during prosecution on the other side, litigation misconduct [2] Fees must be reasonable-using the lodestar method (hours times reasonable hourly rate) [3] Party must “prevail” to be eligible for attorneys’ fees examples: either recover damages, get an injunction or as infringer, get the patent declared invalid. |
Remedies
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List the Defensens and Limitations
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1. Inequitable Conduct
2. Misconduct 3. Antitrust 4. Doctrines 5. Preemption as a Limitation on Patentees 6. Inventorship and Ownership 7. First Inventor Defense 8. Experimental Use 9. Immunity |
defenses
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How is Inequitable Conduct Judged?
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2 Step Process
1. Threshold levels of materiality and intent to deceive must be proven Once the threshold levels are established, the court must STEP 2: balance them and determine as a matter of law whether the scales tilt to a conclusion that inequitable conduct occurred. Intent - If found, entire patent is unenforceable. Materiality – When it is not cumulative to information already of record or being made of record in the application and it refutes, or is inconsistent with, a position the applicant take in asserting an argument of patentability. |
defense
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Misuse - § 271(c)
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i. Patentee may make and sell non-staple goods in connection with invention (where the only known use is infringing use);
ii. Patentee may do more than enter into explicit licensing agreements; iii. Patentee may bring suit without fear that doing so will be regarded as unlawful attempt to suppress competition. iv. Patentee can refuse to license or use any rights to patent; v. Patentee may condition license on acquisition of license to another patent or purchase of a separate product unless there are market power (antitrust) considerations. |
defense
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Antitrust
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Generally, patent holder’s have antitrust immunity.
i. Patentee who brings infringement suit may be subject to antitrust counter claim if defendant proves: 1. The asserted patent was obtained through knowing and willful fraud; OR 2. The infringement suit is “a mere sham to cover what is atually nothing more than an attempt to interfere directly with the businessrelationships of a competitor.” |
defense
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Name the Defense Doctrines
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i. First Sale Doctrine (exhaustion) – Typical customers of patented goods may enjoy the goods they purchase without restriction.
ii. Doctrine of Implied License – Generally, if a patentee consents to use of the patented invention, then the court will use an implied license defense to a later infringement suit. iii. Repair/Reconstruction – Repair of a patented device is permissible, while reconstruction is not. A purchaser is within its rights to modify a machine by substituting a readily replaceable part whether or not the replacement served some public policy purpose. 1. Test for determining whether a new article has been made (reconstruction): a. Nature of actions by defendant b. Natur of devioce and how it is designed; c. Whether a market has developed to manufacture or service the part at issue; d. Objective evidence of intent of patentee. |
defense
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Explain the Preemption as a Limitation on Patentees
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Basics of Preemption – Once the patent issue is removed form the case, patent law can no longer preempt remaining state law claims.
Unfair Competition Law – A state connot enact statutes that provide patent-type rights. Trade Secret Law – State trade secret protection is not preempted by federal patent law. |
defense
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Other Limitations on Contractual Provisions
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i. The Licensee’s Right to Challenge the Validity of Patent
1. Challenge Rule says that a licensee must: a. Actually cease paying royalities; and b. Provide notice to the licensor that the reason for ceasing payments is that it believes the patent to be invalid. ii. Post-Expiration Royalties and Restraints (**ALWAYS ON THE TEST**) 1. Rule: A Patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se. 2. Term extension of license to cover post-expiration is “Patent Misuse.” 3. Brulotte decision covered by statute § 271(d) |
defense
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Experimental Use
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Experimental use of a patendted product may not be infringement in certain cirumstances:
i. Hatch-Waxman Act – Allows testing strictly for FDA submissions § 271(e) ii. The § 271(e)(1) Exemption and “Reasonably Related” Uses iii. Infringement under § 271(e)(2) iv. Patent Term Extension |
defense
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Inventorship and Ownership
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i. Joint Inventorship – Each joint inventor gets a pro-rata share.
ii. Retroactive licensure – Cannot do this. |
defense
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First Inventor Defense
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Defense available for someone who meets ALL of these requirements:
1. Method Claims; 2. For persons acting in good faith; 3. Actually reduced the subject matter to practice at least 2 year before filing date 4. Commercially used the subject matter before effective filing date |
defense
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Governmental Immunity
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i. Federal Government – 28 U.S.C. § 1498
ii. State Government – 11th Amendment and § 271(h) |
defense
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Infringement - Generally
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9.1. Claim Interpretation
9.1.1. Procedure, Judge, Jury, and Appellate Review 9.1.1.1. Markman II Case – Judge (court) is responsible for interpreting claims where meaning of the claim is disputed. 9.1.2. Procedure: Interpretive Approaches and Evidentiary Sources 9.1.2.1. Claim Interpretation Rules 9.1.2.1.1. Intrinsic Evidence of Record (The patent itself) 9.1.2.1.2. Claims 9.1.2.1.3. Specifications 9.1.2.1.4. Prosecution History (if applicable 9.1.2.1.4.1. If this resolves ambiguity, then do not look at extrinsic evidence 9.1.2.1.5. Extrinsic Evidence (Any evidence external to the paten and file history. 9.1.2.1.6. Expert Testimony 9.1.2.1.7. Prior Art 9.1.2.1.8. Inventor Testimony 9.1.2.1.9. Dictionaries 9.1.2.1.10. Technical Treatises / Articles |
infringement
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2 Causes of Action – 35 USC § 271
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Direct (Patentee brings action against defendant who is himself committing acts that infringe) AND
Indirect |
infringement
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Doctrine of Equivalents - Indirect
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9.2.1.1. Doctrine of equivalents – Accused device is an equivalent to that claimed in the patent.
9.2.1.1.1. FUNCTION-WAY-RESULT TEST: 9.2.1.1.1.1. Whether accused product performs: 9.2.1.1.1.1.1. Substantially the same Function as the patented invention; 9.2.1.1.1.1.2. In substantially the same Way; 9.2.1.1.1.1.3. To obtain substantially the same Result. 9.2.1.1.1.2. If Yes to FWR Test, but there is a new element used that didn’t exist prior to filing original element, you must test whether: 9.2.1.1.1.2.1. At the time of the infringement, a PHOSITA would have recognized the prior art or element. If yes, then the infringement occurred but it is not a literal infringement. |
infringement
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Prosecution History Estoppel - Indirect
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9.2.1.1.3.3.1. Protection for existing patents.
9.2.1.1.3.3.2. a person who has filed and then makes amendments to design around, has no cause of action for infringement to the pre-amendment patent claims. 9.2.1.1.3.3.3. Equivalents not protected by Prosecution History Estoppel from Bar: 9.2.1.1.3.3.3.1. Unforeseeable Equivalents 9.2.1.1.3.3.3.2. Equivalents beyond a fair interpretation of what is surrendered. 9.2.1.1.3.3.3.3. Equivalents that are aspects that have only a “peripheral relation” to the reason the amendment was submitted. 9.2.1.1.3.3.3.4. Any situation where a PHOSITA could not “reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent.” |
infringement
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Literal Infringement
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Every limitation recited in the claims is found in the accused device;
9.2.1.2.1. Means-Plus-Function TEST: 9.2.1.2.1.1. Word “MEANS” appears in claim element in combination with a function, it is presumed to be a means-plus-function element to which § 112 P6 applies. 9.2.1.2.1.2. Presumption is overcome if the claim recites sufficient (detail) structure or material for performing the claimed function 9.2.1.2.1.3. If not term “MEANS”, MPF does not apply. 9.2.1.2.1.4. Differences between MPF and DOE 9.2.1.2.1.4.1. MPF is literal infringement only 9.2.1.2.1.4.2. Any insubstantial change will be an equivalent under MPF 9.2.1.2.1.4.3. DOE can sue for things that are developed after patent issues, but not under MPF 9.2.1.2.1.4.4. Under 112 device must perform identical function, under DOE, function must just be “substantially” the same |
infringement
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Indirect Infringement
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Patentee brings action against a defendant whose acts do not infringe, but that contribute to or induce acts of direct infringement by a third part
9.3.1. Active Inducement – party encourages or aids another to directly infringe a patent 9.3.1.1. Analysis for Active Inducement 9.3.1.1.1. Has the end user directly infringed? 9.3.1.1.2. If so, then is there proof of actual intent to cause the acts which constitute the infringement? 9.3.1.1.2.1. Did the infringer know or should have known that his actions would induce actual infringements? |
infringement
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Contributory Infringement
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lower standard of intent
9.3.2.1. Usually the sale of a component of a patented device where the component is a “non-staple” item that is not suitable for substantial non-infringing use. 9.3.2.2. There can be no Contributory Infringement without direct infringement. |
infringement
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1.1. 4 Classes of Patentable Subject Matter
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1.1.1. Processes;
1.1.2. Machines; 1.1.3. Manufactures; and 1.1.4. Compositions of matter. 1.2. Additions to Patentable Subject Matter in last 30 Years including “anything under the sun that is made by man” including: 1.2.1. Living Organisms 1.2.2. Computer Programs 1.2.3. Business Methods 1.2.4. NOT including: 1.2.4.1. “laws of nature, physical phenomena, and abstract ideas” |
subject matter
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1.1. Purpose of patents is to promote the ____________
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“usefule arts”
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utility
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To be "useful arts" it must:
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1.1.1. Must be a benefit to public in exchange for patent.
1.1.2. Must accomplish at least 1 of it’s intended purpose |
utility
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1.2. Modern Approach to Utility
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1.2.1. **Two Part Burden Shifting Analysis for Determining Utility**
1.2.1.1. Patentee’s assertion of utility is given a presumption of correctness. Therefore, the USPTO has the initial burden and can challenge the presumption by evidence showing that a PHOSITA would reasonably doubt the asserted utility. 1.2.1.1.1. The USPTO must have some evidence, not just a "doubt" in invention’s utility. 1.2.1.2. If the USPTA succeeds, then the burden shifts back to the applicant to prove utility. 1.2.1.2.1. Chemical inventions must have “substantial utility” to be patented. Test results showing a correlation between the patented chemical/process and the problem you are trying to solve is enough. |
utility
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Disclosure - Enablement and Keypoints and Key date
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Enablement – Must disclose how to make/duplicate invention and is determined as of the date of invention.
1.1.1. **KEY POINTS** 1.1.1.1. Must be Judged at time of filing. 1.1.1.2. Cannot used reference that is not public. 1.1.1.3. State of Prior art at the time of filing |
disclosure
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Enabelment Test
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1.1.2. Enablement TEST:
1.1.2.1. Specification must, at the time of filing, enable PHOSITA the ability to make and use the invention without “undue experimentation.” |
disclosure
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Enabelment Test - What is UE?
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1.1.2.1.1. Generally, anything that takes over 6 months is suspect to “UE.”
1.1.2.1.2. Undue Experimentation TEST (SAID NOT ON TEST IN CLASS) 1.1.2.1.2.1. Quantity of experimentation necessary; 1.1.2.1.2.2. Amount of direction or guidance presented; 1.1.2.1.2.3. The Presence or absence of working examples; 1.1.2.1.2.4. The nature of the invention; 1.1.2.1.2.5. The state of the prior art; 1.1.2.1.2.6. The relative skill of those in the art; 1.1.2.1.2.7. The predictiability or unpredictably of the art; and 1.1.2.1.2.8. The breadth of the claim |
disclosure
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Can Patent reference Trade Secret?
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1.1.3. TEST that an applicant may refer to a trade secret by name only and still satisfy enablement requirements:
1.1.3.1. Equivalent elements are known; 1.1.3.2. Equivalent elements are known to be equivalent; AND 1.1.3.3. Equivalent elements are available to a PHOSITA without undue experimentation |
disclosure
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Enablement By Deposit
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Enablement with biotech can by a deposit of materials in cell depositories
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disclosure
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What is Best Mode and how is it judged?
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1.2. Best Mode – Must disclose the best way to use the device.
Best Mode at the time of filing known to the inventor 1.2.2. 2 PART TEST: 1.2.2.1. Subjective – Whether, at the time the inventor filed the application, the inventor knew of a mode of practicing the claimed invention that he considered to be better than any other. 1.2.2.2. Objective – Compare what the inventor knew with what he disclosed in the application by asking, “Is the disclosure adequate to enable PHOSITA to practice the best mode?” |
disclosure
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What kind of description is required?
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Must have a paragraph describing technology
1.3.1. Picture can be sufficient if “worth 1000 words” 1.3.2. TEST: 1.3.2.1. Whether specification discloses the compound to PHOSITA as something the applicant actually invented at the time of filing. |
disclosure
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Explain the Novelty Bars
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1.1. Bars
1.1.1. Novelty Bar - § 102(a), (e), (g) – means that a patent must be new. 1.1.1.1. Critical Date = Date of Invention 1.1.2. Statutory Bars - § 102(b), (c), (d 1.1.2.1. Critical Date = 1 year prior to filing date 1.1.3. Critical Date – Earliest date that an inventor may claim benefit. 1.1.4. Effective Date – Date of Prior Art 1.1.5. TEST: 1.1.5.1. If Critical Date is earlier, Patent Wins. 1.1.5.2. If Effective Date is earlier, Prior Art Wins. |
novelty
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Public Use
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1.1.1.1. TEST for Private Use:
1.1.1.1.1. Private 1.1.1.1.2. Under the inventor’s control; AND 1.1.1.1.3. Not for commercial purposes 1.1.1.2. 3 Rules for Public Use 1.1.1.2.1. Need not be more than one of the patented articles; 1.1.1.2.2. Does not depend on number of people to whom its use is known; 1.1.1.2.3. Even if just a part of the whole, it is public use. (mechanical part) 1.1.1.2.4. Not actually used by public but publicly assessible. I.e. Arena |
novelty
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Experimental Use
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1.1.1.1. TEST for Experimental Use:
1.1.1.1.1. Necessity for public testing 1.1.1.1.2. Inventors amount of control over the experiment 1.1.1.1.3. Nature of the invention 1.1.1.1.4. Length of the test period 1.1.1.1.5. Whether Payment was made 1.1.1.1.6. Secrecy obligation/agreement? 1.1.1.1.7. Whether records were kept 1.1.1.1.8. Who conducted the experiment 1.1.1.1.9. Degree of commercial exploitation during testing 1.1.1.1.10. Whether invention reasonably requires evaluation under actual conditions of use 1.1.1.1.11. Whether testing was systematically performed 1.1.1.1.12. Whether the inventor continually monitored the invention during testing 1.1.1.1.13. Nature of contacts made with potential customers |
novelty
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On-Sale Bar
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1.1.1. - § 102 (b)
1.1.1.1. TEST: 1.1.1.1.1. Product must be the subject of a commercial offer for sale 1.1.1.1.2. Invention must be ready for patenting 1.1.1.1.2.1. TEST to know when ready for patenting: 1.1.1.1.2.1.1. Proof of Reduction to Practice; OR 1.1.1.1.2.1.2. Proof that the inventor had prepared drawings or descriptions of the invention sufficient to enable PHOSITA to practice invention |
novelty
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3rd Party Activity
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1.1.1. § 102(d) – Another person using or selling product is same as inventor selling or using.
1.1.1.1. RULE – The standards are the same, whether the use or sale is by the inventor or by someone else without the inventor’s consent. |
novelty
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Foreign Activity as a Statutory Bar
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1.1.1. - § 102(d) bars foreign patent applicant from obtaining US Patent if:
1.1.1.1. Foreign Application is filed more than one year before the US application is filed; AND 1.1.1.2. Foreign Patent ISSUES before the US patent is FILED. |
novelty
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List the different types of "Loss of Rights"
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1.1.1. Timely Application – Loss of Right
1.1.2. Public Use 1.1.3. Experimental Use – Public use can be “incidental to experimentation” 1.1.4. On-Sale Bar 1.1.5. Third-Party Activity 1.1.6. Foreign Activity as a Statutory Bar |
novelty
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What does "first to invent" mean?
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1.1.1. Be the first to invent. Inventions require conception and reduction to practice. (Priority – 102(g))
1.1.1.1. Conception: 1.1.1.1.1. TEST: 1.1.1.1.1.1. Inventor must form in his mind a definite and permanent idea of the complete and operative invention. 1.1.1.1.1.2. Idea must be so clear that a PHOSITA could reduce to practice without undue experimentation. 1.1.1.1.1.3. Conception must include every feature on claimed invention |
novelty
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What is reduction to practice?
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1.1.1.1.1. Priority is awarded to the first person to reduce the invention to practice, either:
1.1.1.1.1.1. Actually, by building/constructing the device; OR 1.1.1.1.1.1.1. Prototype made? - At the time when the inventor can prove the product or process was produced or applied successfully, 1.1.1.1.1.1.1.1. Standard is “common sense.” Did it solve the problem? 1.1.1.1.1.2. Constructively by filing a patent application. 1.1.1.1.1.2.1. In any event, NO later that the time of filing of the patent application. |
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What are the exceptions to reduction to practice?
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1.1.1.1.1. 2 Exceptions to Priority going to first to RTP:
1.1.1.1.1.1. An inventor who was the first to conceive the invention but last to RTP will be denied priority if he did not exercise reasonable diligence in RTP from a time just prior to when the first person who RTP conceived the invention; OR 1.1.1.1.1.2. The second inventor will be awarded priority if the first inventor abandoned, suppressed, or concealed the invention after RTP. |
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What is Reasonable Diligence (RE the exceptions to "reduction to practice")?
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1.1.1.1. Reasonable Diligence: Abandonment, Suppression, and Concealment – First person to invent loses his right to patent if that person does abandon, suppress, or conceal the invention
1.1.1.1.1. RULES: 1.1.1.1.1.1. Mere lapse of time is insufficient; 1.1.1.1.1.2. If there is a resumption spurred by another party’s entry into the field, then an adverse inference of suppression or concealment can be drawn Party asserting that they are entitled to earlier date must show “diligence” by a strict standard, basically “working continuously: on RTP. |
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What is "First to Identify?"
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Identity of Invention and Anticipatory Enablement
1.1.1.1. Identification of each and every limitation of the claimed invention must occur in a single source. 1.1.1.2. The identification must meet the enablement requirement. 1.1.1.3. The Prior Art Reference to anticipate the invention must be prior and also have sufficiently describe the claimed invention to have it placed in possession of a PHOSITA. |
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Check Known or Used
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Only knowledge and use in a manner accessible to the public would render a second independent inventor’s patent invalid.
1.2.3.1. RULE: Cannot use one’s own prior art against them. Includes [1] Lost Art [2] Abandonment [3] Public Knowledge (including Secret Prior Art) |
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Last Art Test
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Even if you’re not the true 1st inventor, you can receive a patent if:
1.1.1.1.1. You believe you’re the 1st AND 1.1.1.1.2. Discovery was through your own genius AND 1.1.1.1.3. There is no existing or living knowledge of the improvement or former use at the time of discovery. |
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Abandonment
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1.1.1.1.1. Abandoned patent applications will be prior art and will act as a bar to future patents even if no patent was issued.
1.1.1.1.2. Abandoned machines that successfully operate as intended is prior art and will bar a future patent. 1.1.1.1.3. Unsuccessful and incomplete invention will NOT be a bar to future patents. |
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Public Knowledge (including Secret Prior Art)
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Actual knowledge is not required for the disclosure to be considered prior art under § 102(a). Sufficient if it is publicly available to a PHOSITA.
1.2.3.2.2. Secret Prior Art § 102(e) – applications have to be published after a maximum of 18 months after filing date under US law. 1.2.3.2.2.1. Patent applications can anticipate an application as prior art if: 1.2.3.2.2.1.1. US Patent application filed and published before current applicant’s invention; OR 1.2.3.2.2.1.2. US Patent granted before current applicant’s invention. 1.2.3.2.3. Secret Prior Art § 102(g) – prior art can defeat novelty even if its inaccessible to the public |
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What is the test for anticipation?
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1.2.3.2.3.1. TEST for anticipation:
1.2.3.2.3.1.1. Invention must be complete (conceived and reduced to practice); AND 1.2.3.2.3.1.2. Invention must not be abandoned, suppressed or concealed. |
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Check if invention described in printed publication
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1.2.4.1. Printed Publication
1.2.4.1.1. Must be publicly accessible to those interested in the art exercising reasonable diligence. 1.2.4.1.2. Need to be catalogued or shelved in a meaningful way. 1.2.4.1.3. Methods of indexing needs to bear some relation to the content of the printed material. The name of author and topic of paper is not sufficient. |
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Check to see if patented in foreign country
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1.2.5.1. Standard for determining whether something constitutes foreign patent:
1.2.5.1.1. Publicly Accessible to a 1.2.5.1.2. PHOSITA who is charged with having knowledge of all the contents of the prior art 1.2.5.1.2.1. Tough Standard. No Enablement requirement needed. Just disclosure. 1.2.5.2. Two distinct situations when this applies: 1.2.5.2.1. Same invention patented by another person in a foreign country. 1.2.5.2.1.1. Generally, first patent wins. 1.2.5.2.2. Same inventor applies for US patent more than 12 months after receiving foreign patent on same invention from foreign country. |
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what is a Derivation and what is the test?
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§ 102 (f) – Named inventor must have actually invented the patented device, he or she must not have “derived” it from another source.
1.2.6.1. 2 PART TEST to show Derivation: 1.2.6.1.1. Named inventor conceive first? 1.2.6.1.1.1. Corroboration? 1.2.6.1.1.2. If not, go to next step. 1.2.6.1.2. Communication of the Conceiver’s conception to the patentee? |
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FRAMEWORK FOR ANALYZING 102
Step 1 |
1.1.1.1. Determine whether the question presents a novelty or statutory bar.
1.1.1.1.1. Clue-sometimes, it can be both, and either one will invalidate the patent: 1.1.1.1.1.1. Public Use 1.1.1.1.1.2. On Sale 1.1.1.1.1.3. Printed Publication 1.1.1.1.1.4. Another Patent 1.1.1.1.1.5. Another Patent Application |
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FRAMEWORK FOR ANALYZING 102
Step 2 - Critical Date |
1.1.1.1. Determine the critical date of the patent of application at issue
1.1.1.1.1. Either “invention” (conception or RPT) for novelty bars 1.1.1.1.2. One year prior to filing date, (statutory bars) |
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FRAMEWORK FOR ANALYZING 102
Step 3 - Determine the effective date of prior art |
1.1.1.1. Determine the effective date of prior art
1.1.1.1.1. Is this even valid as anticipating prior art? 1.1.1.1.1.1. Text of 102 1.1.1.1.1.2. Is the reference enabling? |
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FRAMEWORK FOR ANALYZING 102
what is the effective date? |
1.1.1.1.1.1. Date of first public use
1.1.1.1.1.1.1. Sub-Issue: What must you have to get public use (more than one person, public accessibility) 1.1.1.1.1.1.2. Sub-Issue1: What is a defense to public use? (experimental use) 1.1.1.1.1.2. Date of Publication 1.1.1.1.1.2.1. When did it become “Publicly Accessible” – dissertation cases 1.1.1.1.1.3. Date of Sale |
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FRAMEWORK FOR ANALYZING 102
Final Issues |
1.2.7.1.1. 102(d) – Special rules for foreign patents
1.2.7.1.2. Priority Disputes – When was the other invention done? (102(g)) 1.2.7.1.2.1. Sub-Issue: Reduction to Practice 1.2.7.1.2.2. Sub-Issue: Conception 1.2.7.1.2.3. Sub-Issue: ASC (Abandonment, Suppression, Concealment) |
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What is Non-Obvious Requirement?
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The nonobviousness requirement prevents a person from obtaining a patent if the invention would be “obvious” to a PHOSITA. It must be significantly different from the prior art.
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Non-Obvious Rule/Factors?
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Rule: Ultimate question of patent validity is a question of law, but there are several factual inquiries under §103:
i. Determine scope and content of the prior art; 1) Sources of prior art 2) Analogous and nonanalogous art ii. Determine differences between the prior art and the claims at issue; 1) Structure 2) Function, properties, advantages iii. Determine the level of ordinary skill in the pertinent art |
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Non-Obvious Secondary Considerations?
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iv. Secondary considerations:
1) Commercial success; 2) Long felt, but unsolved needs; 3) Failure of others to solve problem or otherwise invent device |
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KSR v. Teleflex TEST
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KSR Expands the TSM Test: Federal Circuit erred in stating that a PHOSITA would only look at prior art looking to solve same problem; rather, prior art can be used if a PHOSITA may have used it in conjunction with the problem presented.
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Non-Obviousness - 1st
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Get All Sources of Prior Art
1.1.1.1.1. 102 / 103 Prior Art 1.1.1.1.1.1. 102(e) / 103 - They are same. Even if you could not have known about it but it existed, it counts under 103) 1.1.1.1.1.2. 102(g) / 103 – Prior art for one purpose is prior art for all purposes and in all courts and in the Patent Office. 1.1.1.1.1.3. 102(f) / 103 Prior Art – Subject matter derived from another person is unpatentable under § 102 (f) but also can be combined with other prior art to form a § 103 rejection |
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Non-Obviousness - 2nd
Includes the 2nd test + RP test |
Analogous and Non-Analogous Art (ONLY Analogous considered for § 103) (**READ 577 IN BOOK**)
1.1.1.1.1. Analogous if [1] In same field OR 1.1.1.1.2. OR if [2] “reasonably pertinent” to the problem facing the inventor before making the invention 1.1.1.1.2.1.1. TEST for “reasonably pertinent”: Because of the matter with which it deals, it logically would have commended itself to an inventor’s attention in considering his problem. |
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Non-Obviousness - 3rd
Can analogous prior art references be combined? |
1.1.1.1.1. To determine there is a reason to combine, you look to:
1.1.1.1.1.1. References themselves; 1.1.1.1.1.2. Knowledge of PHOSITAs that certain references, or disclosures in certain references, are known to be of special interest of importance in the field; OR 1.1.1.1.1.3. The nature of the problem to be solved, which leads inventors to look for solutions. |
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Non-Obviousness - 3rd Exception
Teaching, Suggesting, Motivating (TSM) Test |
1.1.1.1.2. Teaching, Suggesting, Motivating (TSM) Test - Should they Be Combined?:
1.1.1.1.2.1. Test of Teaching Away Doctrine – Prior art references can be combined under § 103 1.1.1.1.2.1.1. The references must suggest to a PHOSITA that he should make the invention; AND 1.1.1.1.2.1.2. Once made, the invention would have a reasonable expectation of success. 1.1.1.1.2.2. General Rule: References that teach away cannot serve to create a prima facie case of obviousness. |
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Determine differences between the prior art and the claims at issue;
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2.1.2.1. Structure
2.1.2.2. Function, Properties, Advantages |
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Non Obvious - Determine the level of ordinary skill in the pertinent art
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1.1.1.1. Who is a PHOSITA?
1.1.1.1.1. An objective reasonable person who has knowledge of ALL pertinent prior art 1.1.1.1.2. This knowledge is perfect; it includes obscure references such as foreign patents 1.1.1.1.3. The court will consider the following factors to determine the “ordinary skill”: 1.1.1.1.3.1. The educational level of the inventor; 1.1.1.1.3.2. The types of problems encountered in the art; 1.1.1.1.3.3. Prior art solutions to those problems; 1.1.1.1.3.4. Rapidity with which innovations are made; 1.1.1.1.3.5. Sophistication of the technology; and 1.1.1.1.3.6. Educational level of the workers in the field |
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Non Obviuos - Secondary Considerations
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Commercial Success – Must show a nexus / connection between the commercial success and the merits of the invention to overcome obviousness.
1.1.1.2. Long-Felt need and Failure of Others 1.1.1.2.1. 2 Part Test 1.1.1.2.1.1. The fact that there is a long-felt need in the industry “for a precise product” as defined by a PHOSITA; AND 1.1.1.2.1.2. Others in the industry have tried and failed to satisfy the need. (Proven by expert testimony) 1.1.1.3. Copying – Patentee asserts that a competitor copies the claimed invention, thus showing nonobviousness. 1.1.1.3.1. Happens when competitor is clearly trying to design around the patent. Licensing / acquiescence (existence of agreements, did they consider litigation or agreement) – Pantentee can assert that the acceptance of a license by the infringer or other competitors is an implicit recognition that a patent is nonobvious. |
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What is the 4 Step Process to Review Obviousness?
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1.1. 4 Step Complete Overview (Graham Analysis)
1.1.1. Determine Scope and Content of the Prior Art; 1.1.2. Determine differences between the prior art and the claims at issue; 1.1.3. Determine the level of ordinary skill in the pertinent art 1.1.4. Secondary Considerations? |
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“Reverse Doctrine of Equivalents”
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Where accused product falls under patent but is done in a substantially different way, RDOE restricts the meaning of the words and allows new patent.
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Doct. of Equiv. - Limitations
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9.2.1.1.3. 3 Limitations:
9.2.1.1.3.1. All-Limitation Rule – each limitation of a patent claim is material to defining the scope of the patented invention, and must not be rendered meaningless, or in other words, for there to be infringement under the DOE, an equivalent of each claim limitation must be found in the accused device. 9.2.1.1.3.2. Public Dedication Rule – Subject matter that is disclosed in the patent specification, but not claimed, is dedicated to the public. 9.2.1.1.3.2.1. If you claim that something is not in the patent, the public has the right to take it. 9.2.1.1.3.2 Prosecution History Estoppel |
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