Patent Law
Authors:
Nard, Craig Allen / Wagner, R. Polk
Edition:
1st
Copyright Date:
2007
20 chapters
have results for Patent Law
Chapter Two. Trends and Challenges to the Modern Patent System 92 results (showing 5 best matches)
- The Court stated “whether the trade secret law of Ohio is void under the Supremacy Clause involves a consideration of whether that law ‘stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.’ ” While patent law does not expressly forbid or endorse trade secret law, if “the scheme of protection developed by Ohio respecting trade secrets ‘clashes with the objectives of the federal patent laws,’ then the state law must fall.” The Court then looked at three types of trade secret information in the light of patent law’s policy of disclosure. First, there are inventions that clearly are not subject to patent protection, but would nonetheless serve to benefit society if produced and commercially exploited. Here, in the absence of patent law, trade secret law steps in to “encourage invention” and “prompt the independent innovator to proceed with the discovery and exploitation of his invention.” ...no conflict between trade secret and patent...
- Other lines of empirical work have focused on the role of juries in patent cases; patent filing, and patent law’s effect on innovation in specific technologies. A good deal of the social science work is law- and economics-oriented, focusing on the important normative issues of proprietary claim scope and patentability standards in the context and patent law’s relationship to research and development (R&D) This scholarship adds resolution at the feature level of patent law. And to the extent answers remain unclear, scholars are continuing their work, lest we remain mired in economist Fritz Machlup’s famous quip in 1958 about the patent system: “If we did not have a patent system, it would be irresponsible, on the basis of our present knowledge of its economic consequences, to recommend instituting one. But since we have had a patent system for a long time, it would be irresponsible … to recommend abolishing it.”
- The modern patent system faces several policy challenges that have become increasingly more conspicuous as patent law has grown in importance. This section discusses three challenges. First, it is important that judges, policymakers, scholars, and students have an understanding of patent law’s effect on society, including those it seeks to incentivize and benefit. To this end, we take a look at the empirical and social science evidence relating to patent law, particularly with an eye towards patent law’s relationship to social welfare. Second, we will highlight some of the challenges facing the PTO, and lastly, briefly touch on a few of the challenges confronting the Federal Circuit. The PTO, Federal Circuit, and the challenges facing both institutions are explored in greater detail in Chapter 3.
- The American patent system, as you read in Chapter 1, is grounded in utilitarianism, which means that patent law is designed to enhance social welfare through the production of and access to innovations. Thus, it is important that we have an understanding of the relationship between patent law and social welfare. Unfortunately, while the private value of patents has increased, our understanding of patent law’s relationship to social Therefore, one of patent law’s most pressing challenges, particularly for those who toil in its field, is to continue adding pieces to the social welfare puzzle. A related concern that exacerbates this problem is that there is rarely a monolithic or universal viewpoint in the realm of patent law and innovation policy. But that is not to say there are no answers.
- Lastly, there are inventions that are clearly subject to patent protection. This category is the most controversial. The Court noted that patent law’s interest in disclosure is paramount, and it is the production of these types of inventions that patent law was designed to incentivize. If trade secret protection posed a “substantial risk” that an inventor would opt for trade secret protection under this scenario, the Court noted that it would be “compelled” to strike the state regime down. But the Court held that such a risk was “remote indeed” because inventors will opt for patent protection due to the relative strength of a patent vis-à-vis trade secret protection; indeed, wrote the Court, “[w]here patent law acts as a barrier, trade secret law functions relatively as a sieve.”
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Chapter Eleven. Defenses to Patent Infringement 63 results (showing 5 best matches)
- for patent law purposes from the issue of of patent rights in an invention. Patent law requires that the true and original inventor or inventors be named in the application for a patent, and United States patent law requires that a patent issue to the correct inventive entity, that is, the individual(s) who actually invented the claimed subject matter, not the entity who owns the patent right. Failure to satisfy this requirement may lead to the invalidation of the patent. Because of this potential sanction, the patent law provides for the correction of non-deceptive misjoinder and nonjoinder of inventors.
- Inventorship provides the starting point for determining ownership of patent rights. Absent some effective transfer or other obligation to assign patent rights, the individual inventor owns the right to apply for and obtain a patent. There can be either a sole inventor or joint inventors, and joint inventors jointly own the patent right. To be sure, invention is often driven by collaborative efforts that are, based on principles of contract, owned by a common employer. Indeed, assignment of patent rights is quite common. Federal law explicitly provides that patents have the attributes of personal property, and that both patents and applications for patents are assignable. And, importantly, there is a recording statute for patents; so the chain of title should be searched before any assignment is executed.
- Patents confer rights to their holders, and those rights, by law, can be sold, licensed, or otherwise transacted in various ways. Thus, most arrangements, business combinations, and other licensing schemes are perfectly legal. For example, territorial or field-of-use restrictions on patent licenses are permissible (even though such restrictions are likely antitrust violations where patents are not involved). Where antitrust and patent misuse applies, then, is in those circumstances where the patent right has been abused or overextended in some way. As noted above, the line between a legal use of the patent grant and an abuse of the patent grant is not crystal clear. However, at least two dimensions of analysis drive most of these cases. The first is the distinction between activities that occur the scope of the patent claims, and those that ...evaluate whether the patentee has “market power” in the market for the patented good or service. Market power refers to a situation where...law
- The Supreme Court’s majority opinion reasoned that by extracting a promise to continue paying royalties after expiration of the patent, the patentee extends the patent beyond the term fixed in the patent statute and therefore in violation of the law. That is not true. After the patent expires, anyone can make the patented process or product without being guilty of patent infringement. The patent can no longer be used to exclude anybody from such production. Expiration thus accomplishes what it is supposed to accomplish. For a licensee in accordance with a provision in the license agreement to go on paying royalties after the patent expires does not extend the duration of the patent either technically or practically, because, as this case demonstrates, if the licensee agrees to continue paying royalties after the patent expires the royalty rate will be lower. The duration of the patent fixes the limit of the patentee’s power to extract royalties; it is a detail whether he extracts...
- One general rule is that patents are an exception (a government-granted exception) to general principles against anticompetitive behavior in the marketplace. This, however, does not mean that patentees are immune from all challenges to their behavior on these grounds; the patent law itself provides a doctrine, known as “patent misuse,” which seeks to address activities that run counter to patent policy. In addition, in some cases a patentee can be found guilty of antitrust violations based on activities related to patents. Thus, both patent misuse and antitrust regulations provide important potential defenses for accused infringers.
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Chapter One. What is a patent and why do we have a Patent System? 39 results (showing 5 best matches)
- On the surface, patent law might appear to be a simple reward system: a benefit for inventors who create patentable inventions. And while on one level this is certainly true (inventors do reap benefits as a result of patenting), the operating philosophy of patent law considers inventors not simply as deserving recipients of governmental grants for their own sake, but as instrumental to the larger, utilitarian purpose of the patent law. The basic philosophy of the patent law, then, is that expressed in the U.S. Constitution: “to promote the progress of science and the useful arts.” Patent law is thus straightforwardly utilitarian in outlook: we grant patent rights not to reward inventors for their achievements, but to stimulate others to seek the same reward—and thereby contribute new innovations for the good of society. The reward function of patents, then is not based on a sense that inventors have a natural right to the fruits of their inventions, but because it is the mechanism...
- Second, hand-in-hand with the uncertainty about the net benefits of the patent system is a deep uncertainty about whether the current state of the patent law—the balance between inventors and society—is anywhere near optimal. That is, even if one understands the patent system to be broadly beneficial, one could still be deeply uncertain about whether the current parameters are justifiable. Relatedly, it is difficult in the patent context to know what the effects of a policy change might be—even if the change alters the inventor/society balance in a straightforward way (such as a reduction in patent term length from 20 to 10 years, for example), whether the change would benefit society is not at all clear. In the example here, the reduction in term will reduce the costs of the patent system, but it will also reduce the incentives to invent—thus also reducing the benefits. Of necessity, much of patent policy is based on limited knowledge and assumptions; indeed, this is one of the...
- As a formal matter, a “patent” is a document—an official paper, published by the U.S. Government (specifically, the United States Patent and Trademark Office (USPTO)). What a patent does is describe (in written text and diagrams or drawings) an invention that, according to the USPTO, meets the standards for patentability established under U.S. Patent Law (specifically, Title 35 of the United States Code). The holder of a patent is thus entitled under law to exclude others from making, using, offering to sell or selling, goods or services that fall within the scope of the subject matter of the patent grant.
- . The utilitarian model of the patent law, as noted above, treats inventors as instrumental to the overall policy objective. Thus, the object of the patent law is to strike a balance between rewarding the activities of the past (successful inventors) just enough to stimulate activities in the future (future inventors). From this viewpoint, inventors have no inherent claim to good treatment under the patent law, except to the extent that treating them well will yield more and better inventions in the future. Indeed, society is clearly best off if patentees are unable to capture the full social value of their inventions—but we must allow inventors to capture enough of the value to stimulate future growth. The patent law, then, must enforce a compact between inventor-patentees and society: wherein patentees receive a specified reward (a term-limited right to exclude), but must provide significant benefits to society (full disclosure of the invention, among others).
- . After the written description (at the end of the specification) are the “claims” of the patent, which express the specific subject matter which the patentee “claims” as her invention. Claims are typically written in numbered sentences, and are signaled by introductory phrasing, such as “I claim,” or “What is claimed is.” Claims are the operative part of the patent document—the words that define the scope of the patent grant. That is, “infringement” of a patent occurs when unauthorized activities (making, using, selling, etc.) occur within the scope of the patent claims. Therefore, as one might expect, the language used in claims is at once broad (so as to maximize subject matter coverage) and yet precise (so as to avoid prior art or disclosure problems). Given the importance of claim language, a variety of rules and conventions have developed surrounding claim language—which means that, in general, claims are not written using ordinary syntax, and they can be difficult to parse...
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Chapter Four. An Overview of Patent Prosecution 61 results (showing 5 best matches)
- Rethinking Patent Law’s Uniformity Principle,
- Endowing the PTO with substantive rulemaking power would greatly elevate its role in patent policy. Indeed, one might even expect that, over time, the PTO could become as central to innovation policy in the U.S. as the Federal Communications Commission or Federal Trade Commission are with respect to telecommunications and competition policy, respectively. One might imagine the PTO establishing rules on various key patent law issues, such as the ways in which claim construction is to be conducted, And under rules of administrative law, such interpretations of the patent law would be binding on the judiciary, meaning that the PTO could in theory become the major authority on aspects of the patent law.
- As one might expect of any administrative process, patent prosecution is conducted according to a detailed set of rules, regulations, and procedures. At the top of the regulatory hierarchy is the Patent Statute, Title 35 of the United States Code, as well as the court decisions interpreting the statutory language. The patent statute establishes the basic requirements for patentability, which is the core of patent prosecution. Next is Title 37 of the Code of Federal Regulations, which codifies the formal rules by which patent prosecution is to be conducted. Finally, the USPTO publishes a multi-volume manual, The Manual of Patent Examining Procedure (MPEP), which both collects and interprets the statutory and regulatory sources, as well as establishing in substantial detail the procedures by which prosecution will be conducted. The MPEP in particular does not have the force of law, but because it establishes the rules that examiners must follow when evaluating patent applications, it...
- Another key issue facing the USPTO surrounds the question of its regulatory role in the U.S. patent system. Unlike many federal That is, while the PTO is free to promulgate rules and regulations governing its own operations (most importantly, the patent prosecution process)—and prescribing procedures by which patent applicants interact with the PTO—the agency cannot establish substantive rules concerning the application and interpretation of the patent law.
- The critical thing to understand about the patent prosecution process is its institutional location within the overall scheme of the patent system. In general, it is useful to think of the temporal life of a U.S. patent in two phases: the first phase is patent prosecution; the second phase is patent enforcement. The differences between these two phases are significant, and important to understanding the structure of the U.S. patent system.
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Chapter Six. Novelty and Statutory Bars 84 results (showing 5 best matches)
- Proving date of invention for novelty purposes (as well as for determining who is entitled to a patent between two or more parties claiming the same invention) is unique to American patent law. Other industrialized nations are first-to-file countries, meaning that their focus is on the date of the patent application. For example, in determining novelty, Article 54(2) of the European Patent Convention looks to the “state of the art … before the
- The other prior art scenario under § 102(e) relates to unpublished patent applications. Unlike “publicly accessible” prior art under § 102(a), an applicant may be the victim of so-called secret prior art under § 102(e)(2). If an application is not published, it will be kept confidential pursuant to § 122(a). But the confidential application may nevertheless serve as prior art under § 102(e)(2) if the application discloses the claimed subject matter and ultimately issues as a patent. The most famous case illustrating this doctrine is , plaintiff owned a patent on an invention related to a welding and cutting apparatus invented by Whitford. Plaintiff’s patent was filed on March 4, 1911, this date being plaintiff’s earliest date of invention. The patent issued June 4, 1912. The defendant asserted that plaintiff’s patent is not novel in the light of a patent to Clifford that was filed on January 31, 1911. Clifford did not claim the same invention as the plaintiff, and therefore, the...
- While there is authority for the proposition that one of the basic principles underlying the patent laws is the enrichment of the art, and that a patent is given to encourage disclosure of inventions, no case we have found requires a holding that, under the circumstances that attended the work of Teplitz, the fact of public knowledge must be shown before it can be urged to invalidate a subsequent patent.
- There has been much discussion in recent years among commentators and members of the bar as to whether the United States should adopt a first-to-file system. Indeed, legislation was introduced in 2005 that would change U.S. patent law to a first-to-file system. See, e.g., Mark A. Lemley and Colleen V. Chien,
- case portrayed a zero-sum game. If the court decided not to use § 102(g) for prior art purposes, the first inventor becomes an infringer and the patent’s validity is maintained. But, as the court held, employing § 102(g) allowed the first inventor to escape infringement, but the patent was rendered invalid. Each result is arguably unsatisfactory. In the first scenario, the first inventor is benefiting society by practicing the invention and should not be punished for failing to obtain a patent. In the second scenario, the patentee is also benefiting society by disclosing the invention to the public and should not be punished based on secret prior art. To address this winner-take-all situation, some have proposed the United States should adopt prior user rights—a doctrine that forms a part of the European patent system as well as Prior user rights are also seen as an important component of a first-to-file patent system, one that awards patent rights to the party who was the first...
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Chapter Three. The Federal Circuit and the Patent System 25 results (showing 5 best matches)
- Rethinking Patent Law’s Uniformity Principle
- First, that the court, in its centralized role, would act as the manager and developer of the patent law, and second, that the imposition of such a structure would yield a clearer, more coherent, and more predictable patent doctrine, reduce or eliminate forum shopping, and at least rationalize—if not strengthen—the patent grant.
- The story of the rise of the Federal Circuit to preeminence in the patent field is not one of accident or oversight. There is little doubt about what Congress believed it was doing when it passed the Federal Courts Improvement Act (FCIA) in 1982, establishing the Federal Circuit and designating that court as the exclusive venue for patent appeals, whether from decisions of the U.S. district courts or the United States Patent and Trademark Office (PTO). Unifying appellate jurisdiction under a single court was seen as an effective (albeit largely untested as of 1982) response to the widespread perception that the legal infrastructure of the patent law was not being effectively managed. And there is some reason to believe that the situation in the late 1970s and early 1980s called for action: Congress was presented with reports suggesting that the PTO was largely “freelancing” with respect to the standards of patentability, resulting in an increasing divergence in the legal framework...
- There are several possible reasons for the Supreme Court’s renewed attention to the patent law (and thus the Federal Circuit). One may be the Court’s effort to engage in patent reform. In the late 1990s and early 2000s, there was an increasing sense, especially in the annals of the popular press, that the patent system was in need of serious reform. Two high-profile studies in 2003, by the National Academies of Science and the Federal Trade Commission, identified what were described as serious problems with the patent system, and proposed a number of reform measures. The Federal Circuit’s doctrine was fingered as a root cause of some problems, and the Supreme Court may view its more active role as that of a facilitator in the patent reform discussion.
- In any case, the dramatically increasing role of the Supreme Court in the patent law will pose challenges to the Federal Circuit—not only because that court will have to interpret and implement the at-times vague pronouncements of the higher court, but also because it will directly affect the Federal Circuit’s current role as the central player in the U.S. patent system.
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Chapter Eight. Eligible Subject Matter and Utility 58 results (showing 5 best matches)
- Patent law seeks to avoid the dangers of overprotection just as surely as it seeks to avoid the diminished incentive to invent that underprotection can threaten. One way in which patent law seeks to sail between these opposing and risky shoals is through rules that bring certain types of invention and discovery within the scope of patentability while excluding others.
- doctrine have been substantial. In addition to spurring the growth of software patenting, the lowering of the bar to algorithmic inventions generally has resulted in an explosion of patenting in related areas, such as business methods, financial instruments, tax planning, and more. These changes have been deeply controversial; indeed, the consternation over the patenting of business methods was substantial enough to prompt Congress to enact 35 U.S.C. § 273, which shelters “prior users” of business method patents from infringement claims. There are, as with so many issues in patent law, strong arguments on both sides. On the positive side, the recent doctrinal changes have, as the Federal Circuit suggested in , brought a measure of clarity and predictability to this area of the law. Concerns include: the fact that these patents seem to move the patent system away from its traditional roots in technology; ...patent system generally holds as true in these areas, where there may be very...
- 4. And fourth, there is relatively little demonstrated harm that comes from “useless” patents. “Impossible” patents cannot be infringed. “Useless” patents will not be infringed or enforced. To be sure, they may waste administrative time and effort, but perhaps the imposition of filing fees and other logistical burdens are enough to dissuade frivolous patenting.
- There are good arguments against these concerns, of course. The market is an imperfect mechanism, the disclosures contained in “useless” patents are likely to be less important than the disclosures provided by useful patents, appeals processes and other structures can address incompetence or other administrative problems, and “useless” patents may well harm the system by clogging up the administrative process, by making it more difficult and expensive to find good patents, or by creating vast “thickets” of related patents.
- Patent Application is Disallowed as “Embracing” Human Being
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Chapter Ten. Infringement 69 results (showing 5 best matches)
- Patent law is exclusively federal, and therefore, a patentee wishing to enforce his patent rights must proceed in federal district court. In a patent infringement suit, a patentee asserts that the patent Patent claims are the touchstone of patent protection, and it is the claims that set forth the patentee’s proprietary boundaries. Thus, as explored in Chapter 9, a crucial and oftentimes determinative aspect of patent litigation is determining what the claims mean. Construing the claims is always the first step in an infringement (and validity) analysis. The second step is determining whether the accused product infringes the patent claim(s) at issue.
- Unlike literal infringement, which is straightforward, the DOE is controversial and thorny, and thus deserving of more attention. The DOE is one of the oldest and more controversial common law doctrines in American patent law. What makes the DOE controversial is its inherent tension with patent law’s clear claiming requirement (see § 112, ¶ 2) and the importance of certainty in a property rights regime. Indeed, it is frequently quite difficult to discern what is or is not an “equivalent”—how does Competitor know in advance that four legs is or is not equivalent to three legs? As such, a degree of uncertainty hangs over the patentee’s competitors and their decision making process regarding investment in the manufacture or sale of competing products. On the other hand, strict and literal adherence to the written claim in determining the scope of protection can invite unfair subversion of a valuable right, which would substantially diminish the economic value of patents.
- Rational Ignorance at the Patent Office
- A determination of infringement requires a two-step analysis. First, the claims are to be construed as a matter of law. The second step is a factual determination that examines whether the construed claims “read on” or cover the accused device. In other words, every limitation of the claimed invention is found in the accused product, either literally or an equivalent. The causes of action for patent infringement can be divided into two broad categories: (1) Under the theory of direct infringement, the patentee may bring an action against a defendant who himself is committing acts (e.g., making a product or practicing a process) that infringe one or more patent claims. Direct patent infringement comprises both (1) ...and abetting direct infringement by, for example, providing instructions to infringe or manufacturing a particular component of the claimed invention where the component, for practical purposes, can only be used to infringe the patent directly. Both direct and...
- Warner–Jenkinson made several arguments designed to limit the reach of the DOE. First, with an eye towards minimizing the DOE’s tension with the notice function of the patent claim, the DOE “should be limited to equivalents that are disclosed within the patent itself” or “limited to equivalents that were known at the time the patent was issued, and should not extend to after-arising equivalents.” The Court rejected both of these arguments because the proper time for measuring equivalency, wrote the Court, “is at the time of infringement, not at the time the patent was issued.” Therefore, the DOE can capture after-arising technology that was neither set forth in the patent itself, nor known at the time the patent issued. (The DOE and after-arising technologies are discussed in Section B.3,
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Chapter Twelve. Remedies 34 results (showing 5 best matches)
- There are two broad themes to understand about patent remedies. The first is their importance. By law, patents provide a right to exclude others from the marketplace. Thus, their operation can be enormously powerful, establishing the winners and losers, the pricing and players, for entire industries. A patent remedy can determine whether a product is sold, whether a company continues to exist, and the structure of competition. Because of this power, patent remedies have significant effects, not the least of which are their effects on parties outside the litigation, and the public. Patent remedies, then, are by their very nature thoroughly intertwined with the public interest.
- Id. at 954 (Nies, J., dissenting) (“A patent grants the patentee a legal right to a protected market only for patented goods. A patent does not grant the patentee a right to a protected market in unpatented goods. A patent entitles the patent owner to the fruits of the invention, not the fruits of the patentee’s business generally.”)
- The second important challenge in patent remedies is the difficulty in implementing them properly. The basic problem is evident in the core mission of a patent remedy: to place the patentee in the position that he or she would have been in absent infringement. On the surface, this question may appear straightforward; some money changes hands, perhaps, and a prohibition on further infringement is issued. In reality, however, the task is far more complex. By definition, a remedial analysis must delve into the counterfactual: what would have occurred absent the infringement? Add to this the economic complexities of rapidly evolving markets for advanced technologies, and it becomes apparent that no patent remedies question is easy. And as can be expected in the patent law, the doctrine reflects this complexity.
- , 820 F.2d 384, 390 (Fed.Cir.1987) (“In matters involving patent rights, irreparable harm has been presumed when a clear showing has been made of patent validity and infringement. This presumption derives in part from the finite term of the patent grant, for patent expiration is not suspended during litigation, and the passage of time can work irremediable harm. The opportunity to practice an invention during the notoriously lengthy course of patent litigation may itself tempt infringers. The nature of the patent grant thus weighs against holding that monetary damages will always suffice to make the patentee whole, for the principal value of a patent is its statutory right to exclude.”)
- rule has been controversial from the outset. The primary criticism is that the rule effectively expands the rights granted by the patent to include not only those products within the scope of the claims, but also to include related but non-infringing Critics point out that patents are intended to protect the limited subject matter within the claims, not a market for which the patentee may or may not have entitlement. rule is one of damages, not exclusion: that is, granting the patentee a “foreseeable” scope of lost sales is not at all the same as granting the patentee the right to exclude beyond the scope of the patent. Thus, if a patentee can prove harm that was the foreseeable result of the infringement of the claims, the patent law should allow those damages so as to enable full compensation.
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Chapter Five. Disclosure Requirements 30 results (showing 5 best matches)
- It would be difficult to overstate the importance of patent law’s disclosure requirements, which are contained in the first two paragraphs of 35 U.S.C. § 112. The patent’s disclosure provides the foundation for the claims and hence for the scope of patent protection. On the one hand, § 112 requires the patentee to give the public “fair notice of what the patentee and the USPTO have agreed constitute the metes and bounds of the claimed invention.” On the other hand, § 112 requires the patentee to disseminate to the public information concerning the patented subject matter. This dual notice/dissemination function is intended to assist third parties from engaging in conduct that would infringe the patent while providing the interested public with information that enlarges the storehouse of knowledge, and may also help others to improve upon or design around the claimed invention—thus leading to further technological progress. As the Supreme Court stated in ...he limits of a patent must...
- As the United States continues to trend toward harmonizing its patent laws, the best mode requirement is likely to be eliminated.
- the Federal Circuit explored what does and does not have to be disclosed. Henry Molded was the owner of the ’314 patent, which relates to elongated bar members—a so-called roll stacker—that may be used to support rolls of material such as cellophane or steel. The ’314 patent disclosed a roll stacker made of molded pulp, an environmentally friendly material. Henry Molded sued Great Northern for patent infringement, and Great Northern in turn asserted that the ’314 patent was invalid for failing to comply with the best mode requirement. According to Great Northern, the ’314 patent does not disclose the use of diamond indentations, which provided strength to the molded pulp, in part to prevent it from collapsing while still wet. Henry Molded argued that the use of diamond indentations was a “production detail,” and therefore, did not have to be disclosed.
- 721 F.2d 1540, 1557 (Fed.Cir. 1983) (“Assuming some experimentation were needed, a patent is not invalid because of a need for experimentation. A patent is invalid only when those skilled in the art are required to engage in undue experimentation to practice the invention.”).
- Dan L. Burk and Mark A. Lemley, Policy Levers in Patent Law
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Chapter Nine. Claim Construction 34 results (showing 5 best matches)
- Claim “construction” or “interpretation,” then, is the process of placing the language found in patent claims into a meaningful context, given the circumstances involved. Sometimes claim language In either case, the patent law’s system of claim construction analysis guides the inquiry. Virtually every player in the U.S. patent system undertakes claim construction. For example, the U.S. Patent and Trademark Office necessarily interprets claim language when evaluating the patentability of an invention. Private parties are constantly interpreting patent claim language, of course, either to evaluate potential infringement risk, to gauge patentability, to determine the value of a licensing agreement, or to consider an investment decision. But the really important claim interpretations are those conducted by the courts, usually during infringement proceedings.
- It is an oft-cited truism in the patent law that “the name of the game is the claim.” And intriguingly enough, the doctrine of claim construction is exclusively the province of the courts—there is not a single word concerning claim construction in Title 35. So claim construction, then, is at once an enormously powerful mechanism in the U.S. patent system (perhaps the most powerful), and yet presently, almost completely out of the control of the legislative or executive branches.
- It is useful to note that there is relatively little disagreement or debate about the fundamental framework at issue here. That is, the patent law has for some time held that claim language should be interpreted though the lens of a person having ordinary skill in the art at the time of the patent’s filing.
- Patent claims are, put simply, the textual description of what a patentee “claims” as her patented invention. They establish the basic boundaries of the patentee’s right to exclude others from the marketplace, as well as establish whether the patentee receives a patent at all. In an ideal world claims would be clear, specific, and unambiguous, delineating subject matter much like a deed to a piece of real property defines neighbors’ lot lines. Of course, the reality is far more complex. The words in patent claims describe the margins of , not land—a far more malleable and elusive target. Further, in some technological areas, words may simply not adequately describe the concepts desired, if at all. And yet they must be used: without a clear understanding of what is and is not covered by a particular patent, the costs of the patent system rise dramatically.
- , the Supreme Court set into place the basic structural design of the claim construction process. Holding that the Seventh Amendment’s guarantee of a jury trial did not apply to the interpretation of the patent document, the Court made quite clear that the question was “exclusively within the province of the court.” More important than the holding, however, was the reasoning. Justice Souter, writing for a unanimous Court, initially framed the issue in traditional (and traditionally narrow) Seventh Amendment terms: whether the right to a trial by jury existed under the English common law in the late 18th Century. Here the Court noted that while patent infringement actions were unquestionably tried to juries during the relevant time period, the historical record was far less clear regarding the locus of decision making on interpretation. The Court’s historical analysis—as one might imagine—was substantially complicated on this point due to the fact that patent claims (at least as we...
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Chapter Seven. Non–Obviousness 48 results (showing 5 best matches)
- test, the Court applied the test to the facts before it. The patent in —the ’798 patent—related to a spring clamp that was fixed to a plow and permitted plow shanks to be pushed upward when they hit obstructions in the soil, and then sprung the shanks back into normal position when the obstruction was passed over. The focus of the validity analysis was on the shank and the hinge plate. In the ’798 patent, the shank ran underneath the hinge plate. A key prior art reference was the ’811 patent. The principal difference between the ’811 and ’798 patents was that the shank position was above the hinge plate in the ’811 patent. The Court found that reversing the shank position would have been obvious to a person having ordinary skill in the art.
- The hypothetical artisan of ordinary skill pervades patent law. He is fundamental to not only an obviousness determination, but claim interpretation,
- Policy Levers in Patent Law
- The non-obviousness requirement, embodied in § 103 of the patent code, lies at the heart of our patent system and, in many ways, is the most significant obstacle that a patent applicant faces. Indeed, it has been called the “final gatekeeper of the patent system.” ...novelty requirement of § 102 casts a watchful eye over the public domain so as to prevent a patent applicant from obtaining protection on an invention that a person of ordinary skill in the art could retrieve from the technical literature or other available sources, the test for novelty is rather confining in that each and every limitation of the claimed invention must be present in a single prior art reference. The non-obviousness requirement, in contrast, casts a broader net and recognizes that the limitations of a claimed invention may be scattered throughout more than one prior art reference, and it would be “obvious” to a person of ordinary skill in the art to assemble these elements in the form of the claimed...
- the ’015 patent, owned by Iron Grip Barbell, claimed a “weight plate for physical fitness including: a plate body formed with a central throughbore and … further formed with solely a triad of spaced apart elongated handle openings.” The ’015 patent, by disclosing three elongated openings near the periphery of the plate (a three-grip plate), addressed problems associated with grasping and transporting traditional weight plates that typically had only one hole in the center of the plate for insertion of a barbell. The ’015 patent is depicted in Figure 3, below. USA Sports, a competitor of Iron Grip Barbell, also manufactured a three-grip plate and was sued by Iron Grip for patent infringement. USA Sports in turn asserted that the ’015 is obvious in the light of the prior art, namely the ’502 and ’183 patents, which disclosed a two-grip and four-grip plate, respectively. See Figures 1 and 2.
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- This publication was created to provide you with accurate and authoritative information concerning the subject matter covered; however, this publication was not necessarily prepared by persons licensed to practice law in a particular jurisdiction. The publisher is not engaged in rendering legal or other professional advice and this publication is not a substitute for the advice of an attorney. If you require legal or other expert advice, you should seek the services of a competent attorney or other professional.
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- Publication Date: December 13th, 2007
- ISBN: 9781587789021
- Subject: Intellectual Property
- Series: Concepts and Insights
- Type: Hornbook Treatises
- Description: This title combines a comprehensive view of patent law with key academic insights that explain current policy challenges facing the modern patent system. It draws from a range of original works in the field and provides the scholar, the student, and the practitioner with a useful overview of patent law.