Patents Under U.S. Patents Under U.S. LawLaw

© 2006 David W. Opderbeck

Patents -- IntroductionPatents -- Introduction

OverviewOverview– Protection: utility inventions, designs, asexually Protection: utility inventions, designs, asexually

reproduced plantsreproduced plants– Utility patent available for inventions that are new, useful Utility patent available for inventions that are new, useful

and non-obviousand non-obvious– Protection is entirely dependent on the formalities – there Protection is entirely dependent on the formalities – there

is no patent protection without a patent documentis no patent protection without a patent document Why should this be so?Why should this be so?

– Any making, using, selling or offering for sale of the Any making, using, selling or offering for sale of the patented invention protected; No need to prove copying, patented invention protected; No need to prove copying, “substantial similarity,” or consumer confusion“substantial similarity,” or consumer confusion

– Term of protection is limited: basically, 20 years from Term of protection is limited: basically, 20 years from date of applicationdate of application

PatentsPatents

Application ProcessApplication Process– Patents are awarded to the first inventorPatents are awarded to the first inventor– No work for hire doctrineNo work for hire doctrine– Application is filed and then Patent Office Application is filed and then Patent Office

Examines itExamines it May reject for lack of novelty or utility or for May reject for lack of novelty or utility or for

obviousness – applicant permitted to amendobviousness – applicant permitted to amend

– All applications are published after 18 months’ All applications are published after 18 months’ pendency, unless the application is not subject pendency, unless the application is not subject to application in another country or under a to application in another country or under a multinational agreement requiring international multinational agreement requiring international publication and the applicant requests secrecypublication and the applicant requests secrecy

Patent Number

Date Issued

Inventor

Filing Date

Patent Office Classification

and Search Fields

Prior Art References

Cited During Examination

Abstract

Background and Summary

Specification

Claims

Independent Claim

Dependent Claims

Drawing

PatentsPatents What can be patented:What can be patented:

– Five questions:Five questions: Is the invention patentable subject matter?Is the invention patentable subject matter? Is the invention new?Is the invention new? Is the invention useful?Is the invention useful? Is the invention non-obvious?Is the invention non-obvious? Was the application filed within one year of disclosure Was the application filed within one year of disclosure

of the invention?of the invention?

– Additional question post-application: was there Additional question post-application: was there sufficient disclosure of the invention in the sufficient disclosure of the invention in the patent document (written description and patent document (written description and enablement requirements)enablement requirements)

Patent Act sec. 112Patent Act sec. 112

PatentsPatents What can be patented – subject matter:What can be patented – subject matter:

– Patent Act sec. 101: “any new and useful process, Patent Act sec. 101: “any new and useful process, machine, manufacture, or composition of matter, or machine, manufacture, or composition of matter, or any new and useful improvement thereof, may any new and useful improvement thereof, may obtain a patent,” subject to the conditions and obtain a patent,” subject to the conditions and requirements of the law. requirements of the law.

Case law: “Everything under the Sun that is Case law: “Everything under the Sun that is made by man.”made by man.”

PatentsPatents

Some Wacky PatentsSome Wacky Patents– http://www.bpmlegal.com/weird.htmlhttp://www.bpmlegal.com/weird.html

PatentsPatents What can be patented – utility -- “All What can be patented – utility -- “All

that the law requires is that the that the law requires is that the invention should not be frivolous or invention should not be frivolous or injurious to the well-being, good policy, injurious to the well-being, good policy, or sound morals of society. The word or sound morals of society. The word ‘useful,’ therefore, is incorporated into ‘useful,’ therefore, is incorporated into the act in contradistinction to the act in contradistinction to mischievous or immoral.”mischievous or immoral.”

Patents don’t have to be better – just Patents don’t have to be better – just differentdifferent

Patents – Subject Matter – NoveltyPatents – Subject Matter – Novelty

§ 101 - § 101 - Whoever invents or discovers any Whoever invents or discovers any new and useful process, machine, new and useful process, machine, manufacture, or composition of matter, manufacture, or composition of matter, or any new and useful improvement or any new and useful improvement thereof, may obtain a patent therefor, thereof, may obtain a patent therefor, subject to the conditions and subject to the conditions and requirements of this titlerequirements of this title

Note – a claimed invention fails under the novelty Note – a claimed invention fails under the novelty test only if a single prior art reference contains all test only if a single prior art reference contains all the elements of the claimed invention (“all the elements of the claimed invention (“all elements” rule)elements” rule)

new

new

Patents – Nonobviousness and Patents – Nonobviousness and OriginalityOriginality

§ 103(a) § 103(a) A patent may not be obtained though A patent may not be obtained though the invention is not identically disclosed or the invention is not identically disclosed or described as set forth in section 102 of this title, described as set forth in section 102 of this title, if the differences between the subject matter if the differences between the subject matter sought to be patented and the prior art are such sought to be patented and the prior art are such that the subject matter as a whole would have that the subject matter as a whole would have been obvious at the time the invention was been obvious at the time the invention was made to a person having ordinary skill in the art made to a person having ordinary skill in the art to which said subject matter pertains. to which said subject matter pertains. Patentability shall not be negatived by the Patentability shall not be negatived by the manner in which the invention was made.manner in which the invention was made.

obvious

PatentsPatents Note – a claimed invention fails under the Note – a claimed invention fails under the

obviousness test if it would have been obviousness test if it would have been obvious to a person of ordinary skill in obvious to a person of ordinary skill in the pertinent art at the time the the pertinent art at the time the invention was made. Under obviousness, invention was made. Under obviousness, different prior art references can be different prior art references can be combined if there is some suggestion in combined if there is some suggestion in the prior art, or in the general knowledge the prior art, or in the general knowledge within the relevant art, to combine such within the relevant art, to combine such referencesreferences

Prior Art for Novelty Prior Art for Novelty and Obviousnessand Obviousness 102(a) – knowledge or use of the invention by 102(a) – knowledge or use of the invention by

others in the United States, or publication or others in the United States, or publication or patenting anywhere in the worldpatenting anywhere in the world

102(e) – disclosures contained in an application 102(e) – disclosures contained in an application for a U.S. Patent that is either published or for a U.S. Patent that is either published or matures into a patent (Note – does not cover what matures into a patent (Note – does not cover what is claimed, rather covers matters not claimed but is claimed, rather covers matters not claimed but that are disclosed – if claims are the same, an that are disclosed – if claims are the same, an interference is declared) interference is declared)

102(f) – derivation from another102(f) – derivation from another 102(g) – another person in the U.S. first invented 102(g) – another person in the U.S. first invented

the invention and has not abandoned suppressed the invention and has not abandoned suppressed or concealed itor concealed it

Patents – Nonobviousness and Patents – Nonobviousness and Originality – Originality – GrahamGraham Case Case

Facts:Facts:– Patent for device that absorbs shock Patent for device that absorbs shock

from plow shanksfrom plow shanks– ‘‘811 (earlier) patent – shank placed on 811 (earlier) patent – shank placed on

upper side of hinge plate; wobble upper side of hinge plate; wobble problems and restricted flexibilityproblems and restricted flexibility

– ‘‘798 (later) patent – shank is on lower 798 (later) patent – shank is on lower side of hinge plate; allows shank to flex side of hinge plate; allows shank to flex along entire lengthalong entire length

Patents – Nonobviousness and Patents – Nonobviousness and Originality – Originality – GrahamGraham Case Case

– Obviousness Obviousness scope and content of prior art are to be scope and content of prior art are to be

determined; differences between prior determined; differences between prior art and claims at issue are to be art and claims at issue are to be ascertained; level of ordinary skill in the ascertained; level of ordinary skill in the pertinent art is to be resolved.pertinent art is to be resolved.

““Secondary considerations”: Secondary considerations”: commercial success, long felt but commercial success, long felt but unsolved needs, failure of others, unsolved needs, failure of others, acquiescence of others to the patentacquiescence of others to the patent

Patents – Nonobviousness and Patents – Nonobviousness and Originality – Originality – GrahamGraham Case Case

Analysis (cont’d)Analysis (cont’d)– Obvious to a person of ordinary skill in the Obvious to a person of ordinary skill in the

art to move the shank to the position art to move the shank to the position below the hinge plate in order to increase below the hinge plate in order to increase flexibility – this was the only other logical flexibility – this was the only other logical place to put the shankplace to put the shank

Patents – Statutory BarsPatents – Statutory Bars §102(b) – “the invention was patented or described in §102(b) – “the invention was patented or described in

a printed publication in this or a foreign country or in a printed publication in this or a foreign country or in public use or on sale in this country, more than one public use or on sale in this country, more than one year prior to the date of the application for patent in year prior to the date of the application for patent in the United States” the United States”

102(c) – “he has abandoned the invention”102(c) – “he has abandoned the invention” 102(d) – “the invention was first patented or caused 102(d) – “the invention was first patented or caused

to be patented, or was the subject of an inventor's to be patented, or was the subject of an inventor's certificate, by the applicant or his legal certificate, by the applicant or his legal representatives or assigns in a foreign country prior to representatives or assigns in a foreign country prior to the date of the application for patent in this country the date of the application for patent in this country on an application for patent or inventor's certificate on an application for patent or inventor's certificate filed more than twelve months before the filing of the filed more than twelve months before the filing of the application in the United States”application in the United States”

Patents – Statutory Bars – UMC CasePatents – Statutory Bars – UMC Case

Patent No. 3,643,513Patent No. 3,643,513 Timeline:Timeline:

– Patent app. Filed August 1, 1968 – therefore, “critical date” is August 1, 1967Patent app. Filed August 1, 1968 – therefore, “critical date” is August 1, 1967– 1966 – UMC employee Preston Weaver designs accelerometer in response to 1966 – UMC employee Preston Weaver designs accelerometer in response to

request from Navyrequest from Navy– Late 1966 – UMC awarded accelerometer contractLate 1966 – UMC awarded accelerometer contract– Early 1967 – UMC determines Weaver accelerometer will not meet Milspec Early 1967 – UMC determines Weaver accelerometer will not meet Milspec

because it uses electromechanical transducer that cannot distinguish between because it uses electromechanical transducer that cannot distinguish between acceleration from in-flight maneuvers and acceleration from other sources such as acceleration from in-flight maneuvers and acceleration from other sources such as wind gustswind gusts

– April-May 1967 Weaver conceives of accelerometer with analog transducer and April-May 1967 Weaver conceives of accelerometer with analog transducer and built and tested engineering prototype of the sensorbuilt and tested engineering prototype of the sensor

– May 1967 – Navy issues new Milspec and RFP for accelerometers May 1967 – Navy issues new Milspec and RFP for accelerometers – July 27, 1967 – UMC responds to RFP, represents that sensor portion has been July 27, 1967 – UMC responds to RFP, represents that sensor portion has been

“constructed and tested”; but complete accelerometer using the sensor not yet “constructed and tested”; but complete accelerometer using the sensor not yet constructedconstructed

– August 1, 1967 – Critical DateAugust 1, 1967 – Critical Date– August 2, 1967 – UMC submits detailed technical proposal to NavyAugust 2, 1967 – UMC submits detailed technical proposal to Navy– August 9, 1967 – UMC demonstrates complete device to NavyAugust 9, 1967 – UMC demonstrates complete device to Navy– Early 1968 – July 1968 – Navy cancels request to UMC and buys analog Early 1968 – July 1968 – Navy cancels request to UMC and buys analog

accelerometers from a UMC competitoraccelerometers from a UMC competitor

Patents – Statutory Bars – UMC CasePatents – Statutory Bars – UMC Case

Issue: is there an on-sale bar if the Issue: is there an on-sale bar if the invention was not fully reduced to invention was not fully reduced to practice at the time it is made practice at the time it is made available for sale?available for sale?– Generally, invention involves two steps: Generally, invention involves two steps:

conception (the “mental step”) and conception (the “mental step”) and reduction to practice (constructing the reduction to practice (constructing the invention in a working form; or filing a invention in a working form; or filing a patent application – “constructive patent application – “constructive reduction to practice”)reduction to practice”)

Patents – Statutory Bars – UMC CasePatents – Statutory Bars – UMC Case

Policies behind on-sale barPolicies behind on-sale bar– Don’t remove inventions from public which Don’t remove inventions from public which

the public has justifiably come to believe the public has justifiably come to believe are freely availableare freely available

– Prompt and widespread disclosure of new Prompt and widespread disclosure of new inventionsinventions

– Prevent effective extension of patent termPrevent effective extension of patent term– Reasonable time for inventor to determine Reasonable time for inventor to determine

whether a patent is worthwhilewhether a patent is worthwhile Note – this is different than most foreign Note – this is different than most foreign

jurisdictions, which require “absolute novelty” – jurisdictions, which require “absolute novelty” – no use or disclosure prior to the patent no use or disclosure prior to the patent applicationapplication

Patents – Statutory Bars – UMC CasePatents – Statutory Bars – UMC Case

Holding: given the policies behind Holding: given the policies behind the bar, a complete embodiment of the bar, a complete embodiment of the invention is not required to the invention is not required to trigger the bartrigger the bar

Marketing a “mere conception” will Marketing a “mere conception” will not trigger the bar, but where, as not trigger the bar, but where, as here, all the essential elements of here, all the essential elements of the invention exist and are subject the invention exist and are subject to a sale proposal prior to the critical to a sale proposal prior to the critical date, the bar appliesdate, the bar applies

Design Patents – Black & Decker Design Patents – Black & Decker CaseCase

Design Patent D 272,476Design Patent D 272,476 Test for infringement – “if, in the eye of an Test for infringement – “if, in the eye of an

ordinary observer, giving such attention as ordinary observer, giving such attention as a purchaser usually gives, two designs are a purchaser usually gives, two designs are substantially the same, if the resemblance substantially the same, if the resemblance is such as to deceive such an observer, is such as to deceive such an observer, inducing him to purchase one supposing it inducing him to purchase one supposing it to be the other.”to be the other.”

““The accused device must appropriate the The accused device must appropriate the novelty in the patented device which novelty in the patented device which distinguishes it from the prior art.”distinguishes it from the prior art.”

Plant Patents – Yoder Bros. CasePlant Patents – Yoder Bros. Case

Requirements for validity:Requirements for validity:– New, distinct, non-obvious, asexually reproducedNew, distinct, non-obvious, asexually reproduced

Novelty: the plant literally has not existed before; not a Novelty: the plant literally has not existed before; not a plant that existed in nature but has been newly plant that existed in nature but has been newly discovereddiscovered

Distinct: characteristics clearly distinguishable from Distinct: characteristics clearly distinguishable from existing varieties (replaces the requirement of utility)existing varieties (replaces the requirement of utility)

Nonobvious: examineNonobvious: examine– Characteristics of prior plants of the same general type, Characteristics of prior plants of the same general type,

both patented and nonpatentedboth patented and nonpatented– Differences between prior plants and the claims at issueDifferences between prior plants and the claims at issue

How much of an “improvement” does the new plant How much of an “improvement” does the new plant represent?represent?

Asexual reproduction (a new requirement that is Asexual reproduction (a new requirement that is introduced for plant patents)introduced for plant patents)