An inventor is entitled to a patent only if it is:

1. Patentable subject matter
2. The person actually invented it
3. New -- but an invention is not new if it is subject to:
   • anticipation - the same invention is known to the prior art before its invention by the putative inventor
   • priority - someone invented the same invention earlier
   • deviation - inventor learned of the invention from someone else
   • statutory bars - the inventor waited to long after publishing, publicly using, offering for sale.
4. Useful
   • must general, specific, and beneficial utility
5. Nonobvious
   • if the invention would be obvious to someone in the field, in light of everything published or public use, it is obvious.
6. Disclosed (enablement)

1. Patentable Subject Matter

Whoever invents or discovers any of the following may obtain a patent:

• process
• machine
• article of manufacture
• composition of matter
• improvement

DOESN'T INCLUDE:

• Manifestations or products of nature:
  • laws of nature
  • physical Phenomena
  • naturally occurring materials
  • plants found in wild
• abstract ideas
• atomic weapons, immoral inventions, and medical procedures
• useless inventions
• inventions not reduced to practice(must either build or test a working novel, or set it out fully on paper "constructive reduction")
• mathematical algorithms

SOMETIMES INCLUDES:

• algorithims(math in itself is not patentable, but in the process of machine , etc. maybe)
• business methods

CASE LAW:

• State Street
• • data processing system was a "machine"
  • practical utility, does it produce a "useful, concrete, and tangible result?"

Note: Medical procedures, such as surgical procedures, are patentable- but cannot bring an infringement suit against a medical professional using your surgical technique.

2. Ownership and Licensing (you must have invented it)

1. Inventorship (and Misjoinder)

The actual inventor or inventors must apply for the patent. Two common issues arise:

1. when an employee invents, who owns the rights to patent the invention?
   1. an employee, not his employer, generally owns the rights to an invention he conceives or reduces to practice.
   2. the parties can expressly agree to assignment of patent rights. even absent express agreement, there may be an implied assignment that the employer owns the patent rights if teh employee was hired to invent such products or processes or to solve such problems.

1. if more than one person is involved in the process, when are they deemed joint inventors?
   1. joint inventors need not work together, make the same sort of contribution, or contribute to every claim of the patent. 35 U.S.C. 116.
   2. a joint inventor must contribute in a significant manner to the conception or reduction to practice of the full invention - such contribution must be inventive.
   3. it is not sufficient to explain existing concepts or simply supply resources to the real inventors.
   4. joint owners of a patent may each exerise any of the patents rights, without the consent of other joint owners, and with no obligation to share revenue. 35 U.S.C. 262.

If the correct inventor is not named as the applicant, or one of the inventors is not named, or a noninventor is named as one of the inventors, the patent may be invalidated by such nonjoinder or misjoinder.

2. Patents as property: Assignment and Licensing

Parents are personal property - as such, patent owners may license their patents to others for various purposes.

Patent rights are freely assignable, but such assignemnts must be in writing.

1. assignments may also be recorded at the USPTO.
2. unless the an assignment is recorded, it is void against a subsequent purchaser or secured creditor.
3. whether this provision preempts state law recording of security interests in patent rights under the UCC has not been definitively determined.

• Courts limit the ability of patentees to protect themselves from challenges to the validity of the patent.

3. Duration

The patent grant is effective for a term "beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed." 35 U.S.C. 154.

Until 1995, the term was 17 years from the date the patent issued.

3. Novelty

The invention must be new at the time of invention. 35 USC § 102 contains the rules regarding anticipation, derivation, and priority.

A. Anticipation

The applicant is not entitled to patent an invention that on the inventor's date of invention, was known to the public or in public use in the US, or had been patented or published anywhere.

• Anticipation includes an invention that was known to the public or in public use anywhere in the United States, or one that has been patented or published anywhere. Note the different geographic scopes for use vs. publication.
• to be new, the patent must not be referenced in the prior art (all things publicly known or published)that anticipates the invention
  • to be an anticipation, the reference in the prior art must contain all elements of the claimed invention
  • even if the inventor is unaware of the publication or public use, it is still unpatentable
  • the publication need not be widespread
• keep in mind the critical date for judging novelty is the date of invention; if the date of invention is before the date of the publication, novelty is not lost.
  • three different ways for judging the date of invention
    • date of conception (fully conceived of the invention in its operable form), as long as inventor then procedded to dillegently make the invention or file an application
    • absent a date of conception, invention occurs on reduction to practice: when the invention was made and tested
    • if the date of reduction to practice cannot be proven, the date of the filing is the date of invention

nonpublic use, use of the invention in another country, or an unpublished writing would not bar a patent for novelty (though there could be some priority or derivation issues)

To be anticipated, the reference in the prior art must disclose all elements of the invention. Put another way, every element of the claimed invention must be found in a single reference for the invention to be anticipated

• example- A claim involving elements A, B, and C is not anticipated even though there is a prior art reference with elements A and B and a prior art reference with B and C

Inherency

under this doctrine, references include elements that, although not expressly stated, are necessarily present in the product or process described

• example- an alloy that has been patented cannot be patented again when new uses are discovered
• serves to guard against double patenting
• However, a new process to make an old device is novel
  

B. Derivation

Only the inventor is entitled to a patent. Even if the inventor freely discloses an invention and has no plans to patent it themselves, someone who merely learns of the invention cannot get a patent.

C. Priority

All jurisdictions outside of the United States follow the first to file rule- if there are two pending patent applications, priority is given to the first to file.

United States follows the first to invent system.- § 102(g)

RULE: first inventor to reduce his invention to practice (either actually, by making and testing the invention, or constructively, by filing a patent application) has priority; unless:

1) that inventor abandoned, suppressed or concealed the invention, or

2) the other inventor conceived the invention (and proceeded with reasonable diligence toward making and patenting it) before the competing inventor had conceived the invention.

• conception is the formation in mind of inventor, of definite and permanent idea of complete and operative

invention, as it is to be applied in practice.

• Invention starts with “ conception” and is completed upon “reduction to practice”
• Reduction to practice can be:
• • actual- by building and testing a physical embodiment demonstrating ‘that the claimed invention work for its intended purpose
  • constructive- by filing a patent application.

Priority rules in practice.

1) First to RTP is first to invent.

2) Filing date is presumed invention date.

• BUT, an inventor can use evidence to establish a pre-filing invention date
  • RTP will count as invention date

3) Second to RTP may nonetheless prevail by proving:

• conception prior to other’s conception, and
• diligent effort toward actual or constructive RTP from date prior to other’s conception

4) The first inventory by actual RTP date loses that date for priority purposes if they abandon, suppress, or conceal the invention.

• The inventor thereby having lost benefit of actual RTP is entitled to the resumption date as the invention date.

• Once you stop diligent efforts to RTP, you also lose conception date (i.e., conception date = resumption date if ceased diligent efforts).

5) If an inventor’s conception is derived from another person, that other person is entitled to priority,regardless of who reduced the invention to practice.

Limitations on priority

• Activity outside the U.S. cannot be relied upon to establish conception or RTP dates.
• Evidence of conception and RTP dates must be corroborated. Testimony of the inventor’s recollection alone is legally insufficient to establish conception or RTP dates.

D. Loss of Right (§102(b))

once an invention becomes public knowledge, the inventor has one year to file her application

• this can be triggered by a patent or publication in the US or a foreign country or in public use or on sale in the United States.
• Can be triggered by others or the inventor herself.
• this rule prevents an inventor form delaying an application with the hopes of gaining a longer period of protection.
• many other countries are less forgiving, and once an invention is disclosed to the public, it cannot be patented.
• The inventor does not have to be aware of the publication in order for the one year clock to start ticking.
• secret use of the invention for commercial purposes is deemed a public use.
• Case law for determining experimental use is conflicting:

City of Elizabeth v. Nicholson Pavement Co.

• inventor used his new and improved wooden pavement on a public toll road for six years
• however, the purpose of the use was to test the pavement's usefulness and durability was experimental.
• Because the purpose was experimental is was not public use

Egbert v. Lippman

• It was public use to allow a girlfriend to wear an invented corset, under her clothes.
• the use was not really that public, but it was not for the purposes of experiment.

Lough v. Brunswick Co.

• inventor came up with a new part on a boat motor and gave it to a few of his friends to see how it would work
• Court held this use was not experimental, mainly because he wasn't keeping any notes on the alleged experiment.
• whether a use is experimental is a question of law, examined by the totality of the circumstances
• Factors to determine experimental use:
  • the number of prototypes and duration of testing
  • whether records or progress reports were made concerning the testing
  • the existence of a secrecy agreement between the patentee and the party performing the testing
  • whether the patentee received compensation for the use of the invention
  • and the extent of control the inventor maintained over the testing

on sale bar

• inventor also loses the right to patent if the invention is on sale in the United States more than one year before the inventor files her application.
• two requirements:
• • 1) invention must be the subject of a commercial offer for sale and
  • 2) invention must be ready for patenting, meaning it has been reduced to practice or has been sufficiently described to do so.
  • • Recall Pfaff v. Wells Electronics, where inventor accepted a purchase order for his invention. Even though it was not reduced to practice, it was ready for patenting.
    • any commercial sale triggers the bar, even if the invention is far from available to the public

4. "Useful": the requirement of utility

• A modest requirement, met if the invention is capable of providing some identifiable benefit or some utility.
• The benefit need not be socially beneficial, however it must be more than just aesthetic or descriptive
• The benefit must be functional in nature
• To have utility, the invention must work. Does not mean that it needs to work better than other things on the market. However, it must be capable of fulfilling its described function. i.e. you could not invent a machine and say it is useful to fill up a landfill.

The benefit must be specific, substantial, and practical.

• this requirement is troublesome to many newly discovered genes or chemicals- it is not exactly know what they do.
• there is also a tension with the novelty requirement in scientific fields- may invent something new but it takes more than a year to figure out what it is useful for, and by that time the one year clock has run and your invention is barred from being patented.

5. Nonobviousness

• §103 Non-Obviousness. Patent may not be obtained if differences between subject matter and prior art are such that the subject matter would have been obvious at time invention was made to person having ordinary skill in the art to which said subject matter pertains.

Graham v. John Deere factors:

1. The scope and content of the prior art are to be determined
2. Differences between the prior art and the claims at issue
3. The level of ordinary skill in the pertinent art
4. Secondary factors: commercial success, long felt but unsolved needs, failures of others, etc.

1. scope of the prior art

• An invention is not patentable if it is obvious in light of the "prior art" (information in public use, published, etc.)
• in addition to the § 102 requirements (all prior art at the time of the invention), scope is restricted by §103 requirement that it be "reasonable pertinent" to the invention.
• Ask yourself if the reference falls within the field of the inventor's endeavor.
• If it its not, ask whether the reference is reasonably pertinent to the particular problem with which the inventor is involved.

2. Differences in the prior art and the claims at issue

• note there must be differences, or the invention would not be novel
• differences can be of two types

1. the invention adds elements that do not appear anywhere in the prior art. In this case, the question is whether adding the missing elements would have been obvious to a person skilled in the relevant art
2. all of the elements of the claimed invention exist in the prior art, but not in a single reference. Here the question is whether it was obvious to combine the references.

3. level of ordinary skill in the pertinent art

5 factors for determining the ordinary level of skill in the art

1. The types of problems encountered in the art
2. The prior art solutions to those problems
3. The rapidity with which innovations are made
4. The sophistication of the technology
5. The educational level of active workers in the field.

The skill of the actual inventor is not relevant. Therefore, an invention could be obvious to the inventor because she is a genius and much smarter than those in her field, but would not be obvious for the purposes of patent law. Obviousness is judged from the point of view of the PHOSITA (Person having ordinary skill in the art).

4. Secondary factors

Even after a prima facie finding of obviousness on the first three factors, these factors can rebut that finding. Court look to the following factors

1. Commercial success
2. long-felt but unsolved need- if opportunity was there to invent it but no one did, inference exists that it was not obvious
3. failure of others- if others have tried and failed, there is an inference that it was not obvious
4. copying by others- probative when others tried to solve the problem but resorted to copying
5. unexpected results or properties of the claimed invention- if the results were unexpected, the invention was likely not obvious
6. skepticism of experts- when experts did not see a solution, the solution was likely not obvious
7. licensing and acquiescence by others- if competitors licensed the patent rather than trying to solve the problem , suggests that the solution was not obvious to them
8. adoption by the industry- if the invention is adopted as an industry standard, maybe it was better than anything else out there

• Keep in mind that even though an invention may seem obvious after considering the technical issues (first 3 factors), a strong showing of secondary considerations may show the invention was nonobvious. However, obviousness may be so clearly established by the prior art analysis that the secondary considerations cannot change the result.

KSR International v. Teleflex

• court held it was obvious to use an electronic sensor on a gas pedal, where there existed in the marketplace a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance

6. The Patent Application and Examination

Unlike copyright and trademark, a patent requires an application to the USPTO and an argument persuading it to issue a patent. Second, the scope of rights depends on the inventor's application and the course of prosecution. How the applicant drafts and amends the application (especially the claims) will determine whether she is entitled to a patent, and (if a patent issues) how broad her rights to enforce the patent will be. 35 U.S.C. section 101

The patent application requires specifications, drawings, if necessary to understand the invention, and an oath by the applicant, together with the fee. (35 U.S.C. 112-114)

Written Description Requirements

Written Description

1. The patent application must "contain a written description of the invention" in "clear, concise, and exact terms."
2. The test of the written description is whether it shows one skilled in the relevant art that the applicant was in possession of the invention at the time the application was filed.
3. The written description requirement can be met in several ways:
   • the applicant can describe an actual reduction to practice
   • she can show she was in possession of the claimed invention with words, drawings, sufficiently detailed formulas, or other ways to convey information

1. Enablement(disclosure)

• Enablement requires that the applicant disclose to the public how to make and use the invention, as of the date of the application.

• The application must describe the:manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. 35 U.S.C. section 112.

• Remember: Specification must enable a PHOSITA (Person having ordinary skill in the art) to make or use invention
• Enablement serves 3 general purposes'
  1. Like the utility requirement, it bars inoperable inventions from patent protection.
  2. guards against overly broad claims.
  3. serves the disclosure role of patent law.

2. Best Mode

1. An applicant must "set forth the best mode contemplated by the inventor of carrying out his invention."
2. The purpose of the best mode requirement is to ensure that the inventor fully discloses the practical use of her invention.
3. If the inventor has developed special devices or methods that she considers to be the best way of practicing the invention, she must disclose them, even though they are not claimed as part of the invention.
4. Whether the applicant has a best mode is a subjective determination
   1. the inventor is not required to disclose the best mode for practicing the invention,
   2. rather, the inventor is required to identify any mode that she actually considers to be the best mode of practing the invention
   3. the inventor is not held to the level of skill of someone skilled in the art, with regard to the best mode requirement

1. The best mode requirement applies only to practicing the claimed invention, not to other activities associated with the invention.
2. Unclaimed elements that are necessary to practice the best mode must be disclosed, even if such disclosure were not necessary for enablement.
3. If the inventor does have a best mode, her disclosure must be sufficient to allow one skilled in the art to practice it.

The Claims

In patents, the inventor must submit an application that "particularly" and "distinctly" claims the invention.

Patent rights depend not on what the inventor has invented, but rather on how she claims her invention.

The claims "measure the invention" -

1. whether the invention is new and useful is evaluated by comparing the claims against previous work in the field.
2. narrow patent claims get a patent more easily because the more narrowly the invention is claimed, the more likely it is to be new and useful, compared to previous work in the field.
3. broader patent claims are more valuable because the broader the claim is, the more products or processes it will cover, and the more rights it gives the patent holder.

A claim generally consists of 1 sentence with 3 parts:

1. a preamble that generally identifies the invention or puts it in context.
2. a transition that sets the stage for the body of the claim
3. The body lists the elements, or limitations, of the claim.

Claims are essential for determining both whether the applicant is entitled to a patent and later whether the actions of others infringe that patent.

Infringement

A patent does not grant a right to the patented invention, but rather creates the right to exclude. The limits of patent rights are:

1. Specified rights to exclude: The patentee has a set of specific rights to exclude, not to general ownership of the invention.
2. Geographic limits: Infringement is defined as activity within the US.
3. Time limits: the patentee's rights are limited to the term of the patent.
4. Limited to claims and equivalents: Infringement must involve the patented invention, so the inventor's rights are limited to the invention as claimed in the patent.

A patent holder can seek to establish patent infringement by:

1. literally infringed
2. doctrine of equivalents {show presence of every element or its substantial equivalent in accused device}

A person may be liable for infringement if they:

1. directly infringe a patent;

2. induce another to infringe a patent;

3. contribute to infringement;

4. import, sell, offer to sell, or use a product made through a protected process; or

5. manufacture or sell certain components of a patented invention to be assembled abroad.

What does infringement not require?

1. copying
2. commercial gain
3. harm
4. intent
5. bad-faith or negligence

Literal Infringement D's process or product must have every element set forth in the claim

1. Compare the claims of the patent to the accused product
2. If D's matter contains only some of the elements, it is not infringement
3. If D's matter has all of the elements plus more, D is liable for infringement (BUT may be able to get an improvement patent)
4. Case Law

Doctrine of Equivalents. “if it performs substantially the same function in substantially the same way to obtain the same result.”

1. Doctrine of Equivalents prevents a defendant from avoiding liability through insubstantial changes that take a device or process outside the literal language of the patent claims.
2. Infringement occurs if it is determined that the defendant's device or process contains an element that corresponds (either identical or equivalent) to each element described in the patent claim.
3. Equivalency is an objective determination made on an element-by-element basis from the perspective of a person with ordinary skill in the art as of the time of the infringement.

Four Limitations:

1. prosecution history estoppel. if you amend claims during prosecution, and surrender a ground, then you cannot reclaim such ground through the doctrine. i.e., “ file-wrapper estoppel” (estopped from claiming infringement suit later if it literally infringes on earlier claim)
2. prior art restriction. cannot use doctrine to encompass matter in prior art. (e.g., wood in prior art)
3. public dedication doctrine. that which is described in specification of patent, but not expressly claimed, then its assumed dedicated to public domain.
4. all-elements rule. must be equivalent to all elements in claim. that is, cannot say “whole invention is my invention,” rather doctrine only allows to substitute chunks out of your claim.

Canons of claim interpretation

Courts have guidance in how to look - Patent law has a number of canons of interpretation. The canons do not provide a mechanical means for construing claims, but rather guide the court and implement patent law policy. These canons include:

1. Claims should be given the same meaning both for validity and for infringement
2. The language of a claim will be given its ordinary and accustomed meaning.
3. Claims should be construed as broadly as possible
4. If claims are ambiguous, they will be construed to preserve validity. But a court will not read a limitation into a claim simply to preserve validity.
5. The same term will not be given different meaning in different claims.

Indirect Infringement You don't have to directly infringe to be liable for infringement if there is a direct infringer. Two kinds of indirect infringement

1. active inducement
2. contributory infringement (where one offers, sells, or imports material she knows is a component of a patented invention or used in a patented process.)

Defenses

Invalidity

An issued patent is presumed valid. Alleged infringer may challenge validity, contending that the applicant failed to meet any of the requirements for patentability.

• Studies have found 1/3 to 1/2 of litigated patents held are invalid.

Inequitable Conduct

deals with the conduct of the applicant during the prosecution of the patent application.

• can be affirmative misrepresentations
• failure to disclose information
• submission of false information
• other misleading conduct
• simply being a jerk is insufficient. applicant must have acted with the intention to mislead, and the information must be material.

Implied License and First Sale

• An authorized sale of a patented article includes an implied license to use and the sell the article
• If inventor sells her patented product, she implicitly grants buyers a license to use them.

The “ Experimental Use” Defense.

• Case law indicates you can practice invention if purely for philosophical inquiry, amusement, or to satisfy idle curiosity, but not okay if done in connection to make money. Incredibly tiny defense.

• Does not protect even basic scientific research, if the research could lead even indirectly to commercial results.

Laches.

• The defendant may establish laches by showing

1. the patentee unreasonably and inexcusably delayed bringing an infringement action and
2. the delay caused material prejudice to the D.

Equivalent to statute of limitations, but more flexible, in that if wait too long lose right.

• versus estoppel, which requires reliance.

Antitrust and Patent Misuse.

• attempting to make patent monopoly into more than were granted under the law.

Shop Rights.

• Person invents using other's shop (e.g., tools), absent express K to contrary, inventor (Person) gets patent right to invention, but Other has shop rights to use invention in their business.

First-Inventor Defense.

• Applies only to business methods.

Repair and Reconstruction

• Owner of a patented article has a broad right to repair it.
• you can also replace components of the article as they wear out, but not go beyond repair and reconstruct it after the entity, viewed as whole, becomes spent. This is very fact specific.

Remedies

• preliminary injunction
• permanent injunction
• damages
• • reasonable royalties
  • Plaintiffs lost profits (no defendant's wrongful gain): To get lost profits must show: