Patents

Front 1

What is the "transformation requirement" in Gottchalk v. Benson?

Back 1

For a process to be patentable an act or series of acts performed on the subject matter transform and reduced the subject matter into a different state and the patent is not on the idea but on the practical effect of the idea.

Front 2

Accoarding to Diamond v. Diehr, when is a mathematical formula patentable?

Back 2

If mathematical formulas are used to perform a function that is protectable under patent law (i.e. transformation) then the process is patentable.

Court held that the process was patentable and that this process differed from an abstract idea because there was an end product. The inventor was claiming use of the equation for curing rubber, not just the equation.

Front 3

Arrhythmia Research Technology Inc. v. Corazonix Corp.

(Abolished mental steps doctrine)

Back 3

To determine if the subject matter falls with under section 101 the court uses the

Freeman Test

1. An algorithm is cited directly or indirectly in the claim
2. The claim consist of more than the algorithm itself (algorithm plus an otherwise statutory process or apparatus)
3. To determine if the process or apparatus is statutory, look at what the claimed steps actually do rather than how they were implemented. There has to be a practical effect or transformation.

Front 4

State Street Bank Co. v. Sign Financial Group Inc.

Back 4

If the claims are directed to a useful, concrete, and tangible result, then 101 is satisfied.

Front 5

MPEP: A process is patentable if you have

Back 5

1. A concrete repeatable result
2. A tangible real world product is produced

Front 6

Diamond v. Chakrabarty (Patent Eligibility of biotechnology)

Back 6

The statute never says living things are excluded. The court emphasizes distinguishing between products of nature and human made inventions.

This holding made §101 very, very broad.

Front 7

J.E.M. v. Pioneer

Back 7

The PVPA and the PPA are not the exclusive means for patenting plants. A plant may be patented under §101.

Front 8

Juicy Whip v. Orange Bang

Back 8

For an invention to be useful, it must be capable of providing some identifiable benefit.

The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility.

Front 9

Brenner v. Manson (CCPA)

Back 9

In order to meet the utility requirement, a chemical process must have substantial utility with a specific benefit.

Front 10

An invention has utility IF:

Back 10

1. a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (ex. properties or application of a product or process and
2. the utility is specific, substantial, and credible. Credibility of utility is examined from the point of view of a POSITA.

Front 11

Specific utility

Back 11

- specific to subject matter to the claim. This contrasts with a general utility to the broad class of the invention

Front 12

Substantial utility

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– real world use. Utilities requiring further research for real world use are not substantial utilities

Front 13

If an application is rejected by the PTO for lack of utility, then the burden shifts to the applicant to show

Back 13

1. Specific and substantial utility
2. Prove that a POSITA would have recognized that the utility was well established at the time of filing and not later.

Front 14

In Re Brana

Back 14

It is enough to prove utility by showing statistically significant tests. Asserting that a compound exhibits reasonable pharmaceutical properties in standard experiment is adequate.

Front 15

MPEP: A Compound meets the utility requirement when . . .

Back 15

there is any immediate benefit to the public. The benefit can be an identification of pharmacological activity.

Front 16

Titanium v. Banner: Test for determining anticipation

Back 16

1. Determine what the claim covers
2. Whether it covers anything new

Holding: When a claim covers a preferred method of composition, the claim is anticipated if the composition is in the prior art.

Front 17

37 CFR §1.131 (Swearing behind the reference)

Back 17

the inventor swears by filing an affidavit that states he invented prior to the date of the reference as long as the reference was within 1year.

Front 18

Doctrine of Inherency

Back 18

The claimed invention is inherently disclosed or present in the prior art. The missing matter is the thing described, but it would be recognized by a POSITA.

Front 19

Two lines of cases that deal with the doctrine of inherency

Back 19

1. The later claimed invention is accidentally present in the reference, but nobody know of it's presence
*. In this case the doctrine of inherency would not apply, and it is not a bar to patenting it later.
2. The claimed invention is present in a manner that the public has benefited from and are aware of
*. In this case the invention is not patentable and the doctrine of inherency applies

Front 20

Continental Can Co. v. Monsanto (primary requirement of anticipation)

Back 20

To prove anticipation you must have every single element in one reference.

Front 21

Statutory Bars

102(b) A person shall be entitled to a patent unless

Back 21

1. the invention was patented or
2. described in a printed publication
3. in public use
4. on sale

Front 22

Egbert v. Lippman (applicant activities)

Back 22

If an inventor having made his device, gives, or sells it to another to be used by the donee or vendee without limitation or restriction or injunction or secrecy is public use even if confided to one person. Exception is good faith testing.

Front 23

Metallizing Engineering v. Keyton (Competitive exploitation)

Back 23

Competitive exploitation will cause a forfeit of inventor's patent rights. The inventor should either opt for secrecy (trade secret) or for a patent when the invention is ready for patenting.

Front 24

City of Elizabeth v. American Nicholson (Exception to public use: experimental use)

Back 24

To determine if public use or experimental use look at all the relevant circumstances as well as the object and purpose of the use.

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Public use

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Public use does not occur until the invention is put to use generally.

Public knowledge of the invention does not preclude patentability – only public use or sale precluded patentability.

Inventor should be careful to ensure that the public does not believe the invention is in the public domain

Inventor is not selling the invention except where absolutely necessary to conduct the experiment (which will not fall under the statutory bar)

Front 26

What two question arise with the on sale bar 102(b)?

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1. When does the on sale bar apply
2. What constitutes on sale?

Front 27

Pfaff v. Wells

Back 27

For an invention to be on sale
1. Product must be a subject of a commercial sale.
* The invention comes into existence when conceived. Reduction to practice is not required complete the invention. Commercial marketing can mark the beginning of the grace period even though the invention is not reduced to practice.
2. The invention is ready for patenting. To be ready for patenting there must be
a. Proof of reduction to practice before the critical date or
b. Proof that the critical date patentee had information to enable a POSITA to get a patent. The inventor prepared information sufficiently specific to enable a POSITA to practice the invention.

Front 28

Can a conditional sale count as a commercial sale?

Back 28

Conditional Sales will still count as a commercial sale.

Front 29

Is the sale of patent rights a trigger of the "on-sale" bar?

Back 29

The sale of rights is not the same as sale of the invention. Only sale of the invention implicates the on sale bar.

Front 30

What are three types of third party activities that can put an invention in the public domain before the critical date.

Back 30

1. Informing Use
2. Non-informing use
3. Secret Use

Front 31

Electric Storage Battery v. Shimadzu (informing use)

Back 31

Innocent use by a 3rd party is still a public use.

Front 32

Abbot v. Geneva (Non-informing use)
For an invention to be on sale there must be either . . .?

Back 32

1. conception
2. Reduction to practice
* The fact that the subject matter of the invention was thought useful creates a presumption of reduction to practice

Front 33

Pfaff Test (When is an item on sale?)

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1. The invention was a subject of a commercial sale before the critical date
2. Invention was ready for patenting
* It this case the showed the invention was ready for patenting by proving reduction to practice.

Front 34

In Re Carlson (when an invention is patented in a foreign country)

Back 34

The foreign patent is fully disclosed
1. Disclosure is complete when the patent is available to the public.
2. The patent is available to the public when it is accessible to a POSITA. Applicant's knowledge is not essential. It's adequate as long as the prior art is accessible.

Front 35

In Re Hall (When is prior art published?)

Back 35

Test for whether a prior art has been published is public accessibility. Is the prior art accessible to the public (could a POSITA access the subject matter)?

Front 36

Ex Parte Thompson (more detailed requirements of anticipation)

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To anticipate under 102(b), the prior art must sufficiently describe the claimed invention to place the public in possession of the invention.

Front 37

According to Ex Parte Thompson, what two things put an invention in the public domain (possession of the public).

Back 37

The combination of information in the prior art plus the knowledge of the POSITA qualifies as possession.

Front 38

102(d) bars patentability under the following conditions:

Back 38

* an inventor files for a foreign patent application more than 1 year before the U.S. application and
* a foreign patent results from the application prior to the U.S. filing date.

Front 39

102(a) vs. 102(b)

Back 39

Under 102(a) if you publish your own material it can't bar you form getting a patent. Only third party activities can bar you from getting a patent under 102(a).

Under 102(b) both the applicant's and third party activities can bar the patent.

Front 40

Gilman v. Stern

Back 40

Rule: Secret use by a third party will not bar patentability under 102(a)

Rationale: Secret use is not public use and a secret inventor is not a first inventor because he does not enrich the art.

Front 41

CFR 131: Swearing behind the Reference

Back 41

CFR 131: Swearing behind the Reference

To swear behind the reference

1. The prior art must not have claimed the invention
2. The application must be rejected under 102(a) or 102(e) based on another patent or printed publication
3. Date of the prior art or publication shall not be one year prior to the date of the U.S. application
* If this condition is not satisfied then the application will be barred under 102(b)

Conclusion: Rule 131 is only available for rejections under 102(a) or 102(e).

Front 42

Interference 102(g)

Back 42

1. An interference is an inter partes proceeding directed at determining the first to invent as among the parties to the proceeding, involving two or more pending application naming difference inventors or one or more pending applications and one or more unexpired (issued) patents naming different inventors
2. You need the involvement of another inventor. Otherwise, there is no interference.

Front 43

Five Element Test for conception used in Oka

Back 43

1. Formation Directing conception
2. in the inventor's mind
3. of a definite and permanent idea
* in sufficient detail
4. Means for carrying out of complete and operative invention
5. as it is thereafter applied in practice

Front 44

Burden of Junior Party in priority cases

Back 44

Has to overcome the presumption that the senior party is entitled to priority. If successful then you've burst the bubble.

Front 45

Standards to determine actual reduction to practice (RTP)

Back 45

1. Character of testing varies with the character of the invention and the problem it solves
*. Thus more rigorous testing for more complex problems
2. Does the testing demonstrate a solution to the problem intend to be solved by the inventor
a. No need for commercial perfection to determine use
b. No need for replication of the circumstance of the inventor's ultimate use
c. Law requires full and actual testing only where a POSITA would require such testing
d. Testing need not show utility beyond a possibility of failure, but only utility beyond probable failure.
e. Video demonstration is sufficient

Front 46

Woodland Trust v. Flowertree Nursery (Corroboration of oral evidence)

Back 46

Oral evidence must be corroborated to meet clear and convincing evidence standard.

Front 47

Factors to consider whether the corroboration has been met by the clear and convincing standard

Back 47

1. relationship between witness and prior user
2. time period between event and trial
3. interest of the corroboration witness in the suit
4. contradiction or impeachment of witness' testimony
5. extent and details of the corroborating testimony
6. witness' familiarity with the invention and its prior use
7. probability that a prior use could occur considering the state of the art at the time
8. impact of the invention on the industry, and the commercial value of its practice

Front 48

Shop Book Rule – FRE 803(6)

Back 48

certain documents are excluded from the hearsay rule

The rules does not apply to reports of scientific work in interference proceedings.

Front 49

Scott v. Finney (Reduction to practice)

Back 49

For Scott to win he must show

1. Actual reduction to practice before Finney (this is the option he chose)
2. Reduction to practice after Finney was diligent from Finney's conception date until his own reduction to practice.

Front 50

Who has the burden of proof to show suppression or concealment in infringement actions?(Apotex v. Merck (102(g)))

Back 50

1. The party challenging the patent should prove invalidity based on clear and convincing evidence that the invention was made in this country by another inventor.
2. If that burden is met then the other party must provide sufficient evidence to create a genuine issue of material fact as to whether the prior inventor suppressed or concealed the invention (burden of production)
3. Then the challenging party must rebut any alleged suppression or concealment with clear and convincing evidence to the contrary (burden of persuasion)

Front 51

Alexander v. Davis (102(e)) (matters described but not claimed)

Back 51

Rule: Matters described but not claimed in a patent application become property from the time of filing of the patent application.
* Test: Prior must be knowable at the time of invention.
* Disclosures in a published patent application (issued or not) have status as a prior art as of its filing date.

Front 52

Agawam Wools v. Jordan (102(f))

Back 52

1. embrace a plan of improvement and
2. enable an ordinary mechanic to construct the improvement without the exercise of any ingenuity and special skill on his party to construct and put the improvement in successful operation

Front 53

103 obviousness:four part test simplified.

Back 53

1. Ascertain scope and content of prior artificial
2. Ascertain differences between subject matter sought to be patented and prior art
3. Assess level of skill of POSITA
4. “Secondary or objective indicia

Front 54

prima facie obviousness (2143 MPEP)

Back 54

1. Examiner compares prior art and the claimed invention. There must be some teaching, suggestion, or motivation to combine. Suggestion can be found in
a. Nature of the problem
b. In the references themselves
c. In the knowledge of a POSITA
2. burden shifts on to the applicant. Applicant has to submit objective evidence to rebut the prima facie case
3. The Graham test is used when there is a challenge.

Front 55

U.S. v Adams - Is a claim obvious when it combines known elements?

Back 55

Claims can be construed in light of the specification. Look at the level of skill in the art and secondary factors.

Front 56

KSR Teflex - Obviousness means obvious to who?

Back 56

Obviousness question does not mean the invention was obvious to the inventor it means it was obvious to a POSITA.

Front 57

KSR Teflex - How did the Supremes describe a POSITA?

Back 57

# A POSITA is a person of ordinary creativity and common sense, not an automaton.
* POSITA will have common sense and they would use it to fit teaching from multiple patents.

Front 58

KSR Teflex - What is required of a POSITA in order to bar a patent for 103 obviousness?

Back 58

Hence if a POSITA can implement a predictable variation of the patent, then 103 bars it.

Front 59

motivation to combine (In RE: Rouffet)

Back 59

examiner must show that a POSITA confronted with the same problem would
1. select the same elements from the cited prior art and
2. in the manner claimed

Front 60

Obviousness in Chemistry and Biotechnology

Back 60

* Generally the same criterion applies
* For chemical invention if the structure of the compound and the prior art are similar, they will be deemed structurally obvious.
* However, if the claimed compound possess any new property, then to avoid a literal structural obviousness, inventors claimed the method of use of the compound.

Front 61

In Re Dillon: How does an applicant overcome a finding of prima facie obviousness?

Back 61

The burden can be discharged by showing
1. Improved or unexpected utility (show new properties not possessed by the prior art)
2. The prior art is so deficient that there is no motivation to make what might otherwise appear to be an obvious change
* Mere showing of a new property not disclosed in the prior are does not discharge this burden.

Front 62

motivation to combine (In RE: Rouffet)

Back 62

examiner must show that a POSITA confronted with the same problem would
1. select the same elements from the cited prior art and
2. in the manner claimed

Front 63

Obviousness in Chemistry and Biotechnology

Back 63

* Generally the same criterion applies
* For chemical invention if the structure of the compound and the prior art are similar, they will be deemed structurally obvious.
* However, if the claimed compound possess any new property, then to avoid a literal structural obviousness, inventors claimed the method of use of the compound.

Front 64

In Re Dillon: How does an applicant overcome a finding of prima facie obviousness?

Back 64

The burden can be discharged by showing
1. Improved or unexpected utility (show new properties not possessed by the prior art)
2. The prior art is so deficient that there is no motivation to make what might otherwise appear to be an obvious change
* Mere showing of a new property not disclosed in the prior are does not discharge this burden.

Front 65

In Re Deuel (Obviousness for biotechnology)

Back 65

Knowledge of the general method of isolating DNA and cDNA molecules is essential irrelevant to the question of patentiblity of a specific molecule.

Front 66

Hazeltine v. Brenner
Is a pending patent part of the prior art as used in 35 U.S.C. §103?

Back 66

An unpublished co-pending application is a valid art under 102(e) and 103 from the filing date.

Front 67

Oddzone v. Just Toys
Do prior art for 102 automatically qualify as prior arts for non-obviousness under 103?

Back 67

1. owned by the same person at the time the invention was made -or-
2. subject matter was assigned to the same person at the time the invention was made

* The purpose of these exceptions is to provide a safe harbor for inventions involving co-inventors within a single company
* The disadvantage of this case is that it discourages collaborative research, where the scientists involved are not employed by the same company or entity.
* 103(c)(2) provides that patentability is not precluded in the case of research conducted across entities pursuant to a joint research agreement.

Front 68

For a prior art to be considered an analogous art what is required according to In Re: Clay?

Back 68

For a prior art to be considered an analogous art consider whether
1. The art is from the same field of endeavor, regardless of the problem addressed
2. If the reference is not from the same field of endeavor, is it pertinent to the particular problem with which the inventor is involved
a. Addresses the same problem and
b. Relates to the same purpose

Front 69

Patent Specification
What are the elements that the Specification must contain?

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1. Written Description
2. Enablement
a. How to make
b. How to use
3. Best mode of making and use the invention

Front 70

Test for enablement:

Back 70

1. With the disclosure,
2. could a POSITA make the claimed invention (enable a POSITA's knowledge)
3. without undue experimentation.

Front 71

Atlas Powder v. Dupont -
When is a claim fully enabled?

Back 71

Enabled if a POSITA could make and use invention w/o undue experimentation.

Front 72

how does the holding in In Re Wright describe the limitations on a patent created by the written description.

Back 72

Written Description
* Prevents new claims or any new amendments from introducing new material.
* It policies the priority date of the inventive ideas
* Whenever an applicant amends the application, he has to prove that the original application disclosed or contained the same subject mater in the amendment.

Front 73

Vas-Cath v. Mahurakar - What constitutes an adequate written description?

Back 73

If the application disclosure conveys that the inventor had possession at the time of filing of the later claimed subject matter, the written description is satisfied.

Front 74

Written Description arises in patent law:

Back 74

* With respect to later filed claims. If there are no later filed claims you don't have to worry about the written description being a problem
* With application claiming priority under §119 (foreign) or §120 (U.S. Application)
o This issue may also arises to determine whether any new matter has been introduced in the second application under 132
* In interference proceedings with regard to whether the specification supports the claim corresponding to the count.

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Relationship between Written Description and Enablement

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* Enablement tells a POSITA how to make and how to use the invention
* The written description tells what the invention is
* The claims define the scope of the invention
o Claim definiteness : 112 defining exactly what your invention is claiming. Puts the public on notice of the claim scope
o Written description “guards against the inventor's overreaching” in later introduced claims.
* It is possible to enable but not describe an invention
o Specification discusses compound A, but does not describe compound B and C. Therefore, B and C are enable but not described
* It is also possible to describe but not enable
o Describe compound A but don't tell how to make it or how to use it

Front 76

What must accompany a change in the written description?

Back 76

A change in priority date.

Front 77

Enzo Factors

Back 77

#quantity of experimentation necessary
#amount of direction or guidance provided
#presence of absence of working examples
#nature of the inventions
#state of prior artificial relative skill of those in the area of practice
#predictability or unpredictability of the artificial
#the breadth of the claim

Front 78

University of California v. Eli Lilly (Created a super enablement requirement for biotechnology)

Back 78

Specification should describe the invention sufficiently for a POSITA to identify that the inventor invented the claimed invention.

To have an adequate written description fro DNA you must have the precise definition such as the structure, formula , chemical name or physical properties for obtaining the claimed invention. (Created a super enablement requirement for biotechnology)

Front 79

What is the two part test for Best Mode?

Back 79

1. Contemplation – what is the inventor's contemplated best mode
2. Concealment – was it concealed

Front 80

Chemcast Corp v. Arco - Whether failure to disclose an unclaimed feature that is necessary to practice the invention is a violation of best mode?

Back 80

Info known by inventor that relates to claimed features of the invention, must be disclosed.

Front 81

Generally patent applicants are rejected for want of best mode under 2 circumstances:

Back 81

1. Non-disclosure of a preferred embodiment of the invention
2. The undisclosed features materially affects the properties of the claimed invention
* Thus, inventor need not disclose every preference of the inventor

Front 82

CLM:1
A claim that refers back to another claim and further limits another claim in the application; begins with "the"

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Dependent Claim

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Claim type that has the broadest scope and covers a structure, method, or solves a particular problem;Begin with "a"; Lacks limitations

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Independent Claims

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This claim type should refer to the other claims on which it is dependent in the alternative only ( use of “or” & not of “and”)

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Multiple Dependent Claims

*MDCs cannot depend on other MDCs

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Claim writing rules

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# Introduce new elements with and indefinite article ("a" or "an")

1. if you don't it lacks an antecedent basis
1. this makes it an indefinite claim or a claim that does not recite all positive elements. (inferential claim)

# If the element has already been introduced, use "said" or "the" (signaling terms)
# If you use a signaling term with an element that hasn't been introduced, then the claim is indefinite because it lacks an antecedent basis

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CLM: 5
Claims perform what two functions?

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1. legally they precisely define the entitlements of the invention
2. Informs the scientist of the technical advances.

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describe peripheral claims

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involves marking out the periphery or boundary area covered by the claim and holding as infringements only such construction as lie with in that area

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(Central/Perif) -Marks the property boundaries clearly

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Peripheral claims

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(Central/Perif) -Court will employ a literal construction of the claim scope

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Peripheral claims

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(Central/Perif) -Claims have to perform the function of defining the invention without gathering help form specification or drawings

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Peripheral claims

Front 91

(Central/Perif) -Central idea of the invention is claimed

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Central

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(Central/Perif) -More discretion to courts to define the boundaries

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Central

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involve drafting a narrow claim setting forth a typical embodiment coupled with a broad interpretation by courts to include all equivalent constructions

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Central

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How do we determine if the preamble limits the claim?

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* preamble recites essential structures
* preamble becomes necessary to give vitality to the meaning of claim
* when it recites essential steps
* Jepson claim(improvement claim)
* Use of an antecedent basis on preamble phrase MAY- indicate reliance on claim
* Preamble & body used to definde claimed invention.
* Preamble recites additional structure or steps underscored as important.
* Clear reliance on the preamble during prosecution to distinguish the claimed

Front 95

Atlantic v. Faytex
Accoarding to Fatex, how do we treat a product by process claim in terms of patentability?

Back 95

In infringement proceedings, the process is a limitation. However, for patentability you just treat the product by process claim as a product claim.

Front 96

Atlantic v. Faytex
KNOWN INTERCHANGEABILITY means what?

Back 96

The difference between the structure in the patent and the accused device are insubstantial.

Front 97

Atlantic v. Faytex
How do you determine if the two stuctures are interchangeable?

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* if it is well known that one structure can be the equivalent of the other.(by POSITA)
* and NOT if they perform the same function ( but generally 2 structure that perform the same function can be substituted)

Front 98

In Re Donaldson
Can the material from the specification act as a limitation on a means plus function claim?

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112 ¶ 6 mandates that the claims be read with the specification. The PTO is required under 112 ¶6 to interpret claims in light of the specification too.

Front 99

Al- Site v. VSI international
Type of infringement where each and every element of the claim is in the accused product?

Back 99

Literal Infringement

Front 100

Al- Site v. VSI international
there is a little difference between the accused product an the claim but it performs the same function. [even though the element is not present if it carries out the same function in the same manner with the same result]

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Infringement under Doctrine of Equivalents

Front 101

Al- Site v. VSI international
To determine if there is a mean plus function claim

Back 101

1. The claim elements must not recite any structural limitations
* If the claim recites a structure its not a means plus function claim
2. Uses the phrase "means plus function"
3. Even if the phrase is not used, if there is a functional element only without any description of the structure, the claim can be a Means plus function claim

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Post Grant procedures

Back 102

1. Certificate of correction
2. Re-issue 35 U.S.C. §251
a. Prove error that makes the patent inoperative or invalid
b. With no deceptive intent
c. Can be broadening – to broaden must obtain re-issue within 2 years of the original patent
d. Can be narrowing – you can narrow through out the patent term .
* Intervening rights
i. absolute – already have the product
ii. equitable – don’t have the product but have already invested a lot of time and money
3. Re-examination – requires a substantial new question relating to patentability

Front 103

Hewlett Packard v. Bausch and Lomb Inc.
Does an omission also fall with in the statutory language of error?

Back 103

Re-issue requires error and inadvertence. It this case there was a failure to show inadvertence. So it didn’t matter if the omission was an error.

Front 104

In Re Recreative Technologies
Is re-examination limited to substantially new questions of patentability?

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The PTO cannot reject on the same ground on which the application was examined and the claims allowed during original prosecution.

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©2009 Nathan K. Shrewsbury

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