Chapter 16. International Patent Law 39 results (showing 5 best matches)
- This Nutshell focuses primarily on the patent laws of the United States, but draws upon experience of other national patent systems as well. This comparative approach applies with particular force for patents because technology, of course, knows no borders. Adequate protection for inventions in an international market will require protection in many different nations. Normally the reach of patent law in each individual nation extends only to acts carried out in the territory of that state. As a general rule each nation has its own laws and institutions to enforce patents. This general rule, however, turns out to be only approximately true as further explained in Chapter 13.
- Members of the European Union have retained the power to make patent law for themselves subject to the powers granted to European Union institutions to create patent laws for the entire Union. Thus, when the EPO institutions reach a consensus, those rules bind the signatories. Under this procedure, the Union created the biotechnology directive, an order from the European Commission to each of the member states to conform their patent law to those requirements. The European Commission itself enforces the directive to ensure that each signatory complies. The Commission has attempted to create a uniform rule for software patents, but has not as yet been able to enact either a software directive or regulation. The current status of the efforts of the Commission in the field of patents appears on its industrial property website: http://ec.europa.eu/internal_market/indprop/index_en.htm.
- In Europe, a patent applicant has the option of filing a single application for multinational rights and prosecuting that single application in pursuit of a single patent under the European Patent Convention (EPC). The EPC establishes a single office—the European Patent Office (EPO)—for substantive examination and also creates a single period of opposition (9 months) before an application matures into a patent. The inventor, however, must enforce the single EPC patent on a country-by-country basis. Hence, the process of obtaining a patent in Europe is complex. Each country that has joined the EPC maintains its own local patent system, but also acknowledges patents obtained through the EPO.
- Patents are generally territorial, meaning each state enforces its own patents in its own territory. However, occasionally the patent laws of one state take into account activities in another state. For example courts in both the United States and the U.K. have enforced patents against systems that used computers located in another state.
- (a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the
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Chapter 11. Issues in Patent Acquisition 63 results (showing 5 best matches)
- Specifically, only an inventor (or in limited circumstances, an assignee) may apply for a patent. In the event that a patent has multiple inventors, this simple requirement becomes more complex. For instance, even if an inventor only contributes to a single claim in a patent with many claims, that “lesser” inventor is not “lesser” under the law and instead enjoys co-ownership of the entire patent.
- Importantly, an applicant may separately claim subject matter nearly identical to an earlier filing so long as a terminal disclaimer disclaims any patent term beyond the expiration of the first patent. A terminal disclaimer may overcome obviousness-type, but not same invention, double patenting. As amended in the Leahy-Smith America Invents Act, U.S. patent law authorizes this practice:
- Although just two entities—the applicant and the Patent Office—take part in prosecution of a patent application, the grant of a patent affects the public as a whole. And because patent prosecution is , the interested public, particularly the applicant’s competitors, has no input during the acquisition of the patent right. The Patent Office has no laboratories, no test facilities, no dedicated scientists, and no economists to evaluate the assertions of a patent applicant relating to the characteristics or commercial success of embodiments of the claimed subject matter. Absent compelling circumstances, such as a violation of immutable laws of physics giving rise to a rejection under § 101, the Patent Office does not challenge the veracity of a patent applicant’s statements or declarations.
- Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
- To adequately protect an invention in the international marketplace, a patent attorney must work with foreign, as well as domestic, patent laws. Despite harmonization and cooperation efforts, international agreements—such as the Paris Convention, the Patent Cooperation Treaty, and the World Trade Organization’s TRIPS agreement—have left differences in patent practice across the globe. Of these, the two most critical, for prosecution purposes, are the Paris Convention and the PCT. Chapter 16 provides an overview of the domestic implications of these international agreements.
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Chapter 13. Infringement 120 results (showing 5 best matches)
- Currently, individual European countries issue patents, as does the European Patent Office. Notably, a single EPO patent may be enforced in each nation individually; in other words, the single patent is treated as multiple national patents. European Patent Convention, Article 64(1). Indeed, “[a]ny infringement of a European patent shall be dealt with by national law.” Article 64(3). For the most part, this does not cause problems, as most European nations have substantially harmonized patent laws. Claim construction, however, is not uniform throughout the member countries—which should come as no surprise given the inherently problematic nature of the inquiry. Germany and the United Kingdom, for example, construe claims broadly and narrowly, respectively. Due to this difference in claim interpretation, the European Patent Convention purports to set forth a proper methodology: “The extent of the protection conferred by a European patent or a European patent application shall be...
- As an example, this common law doctrine could not be invoked to protect a generic drug manufacturer that tests a patented pharmaceutical prior to the patent’s expiration, even if those tests are necessary to obtain government approval. , 733 F.2d 858 (Fed. Cir. 1984). This decision resulted in a extension of patent term, because a generic manufacturer may not begin proving the safety and efficacy of the drug until after the patent expires. To eliminate this practical extension of patent rights, a new comprehensive law overruled Drug Price Competition and Patent Term Resoration Act of 1984, Pub. L No. 98–417, 98 Stat. 1585. This Act, commonly known as the Hatch–Waxman Act, provided in part:
- Another relatively recent section of the Patent Act has also expanded the reach of domestic patent law. Before 1984, an entity could manufacture and export the unassembled components of a patented combination without infringing. In , 406 U.S. 518 (1972), for example, the Court permitted the defendant to continue manufacturing all the components of a patented shrimp peeler domestically and ship them—unassembled, of course—abroad for assembly and usage. In the words of the Supreme Court, “[t]he statute makes it clear that it is not an infringement to make or use a patented product outside of the United States.” at 527. Section 271(f)—enacted in 1984—partially overruled this decision.
- It shall be an act of infringement to submit—an application under section 505(j) of the Federal Food, Drug, and Cosmetic Act or described in section 505(b)(2) of such Act for a drug claimed in a patent or the use of which is claimed in a patent …, if the purpose of such submission is to obtain approval under such Act to engage in the commercial manufacture, use, or sale of a drug … claimed in a patent or the use of which is claimed in a patent before the expiration of such patent.
- In the absence of an unauthorized (or possibly restricted) sale, a purchaser of a patented good also has the right to repair it without incurring liability for infringement. But if the repairs are too extensive—that is, if the repairs entirely reconstruct the patented invention—the owner has in fact infringed. Despite the inherent difficulty in dividing permissible repair from impermissible reconstruction, case law has outlined guiding principles. If, for example, a patented item is entirely spent during use, rebuilding the item constitutes an impermissible reconstruction. But if, on the other hand, a patented item contains a replaceable part, replacing that part constitutes permissible repair, irrespective of whether the part is worn out. , 291 F.3d 780 (Fed. Cir. 2002). In theory at least, the distinction between reconstruction and repair might depend on an analysis of the predictable life span of a patented invention. Repair would ensure the invention reaches its full useful life...
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Chapter 12. Claim Construction 109 results (showing 5 best matches)
- When granted a patent, an inventor receives an official copy of the patent, complete with an elaborate cover having the seal of the United States Patent and Trademark Office. The patent also proclaims that the “requirements of law have been complied with, and it has been determined that a patent on the invention shall be granted under the law.” This proclamation includes the promise that the inventor now possesses rights under the Patent Act. These rights, however, cannot extend beyond the scope of the patented invention. Thus, the key to patent rights (and validity) depends on the interpretation of the patent claims.
- As recently amended, the Patent Act requires that a patentee’s or applicant’s “specification … conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as his invention.” 35 U.S.C. § 112(a). As discussed in Chapter 10, claims appear at the end of a patent as sequentially numbered predicates that set forth the peripheries of an invention. The meaning of the words in a claim is a challenging inquiry rivaled in patent law only by the difficulty of an obviousness determination.
- The importance of claim construction predominates during patent enforcement proceedings. Before determining whether an activity trespasses on the patented property, the court (or even attorney offering an opinion on infringement) must set the boundaries of the exclusive right. Patent infringement receives detailed treatment in Chapter 13. Claim construction, however, is not only an infringement doctrine; it precedes almost every analysis in patent law. For example, the Patent Office must construe claims during the process of deciding whether a patent meets the substantive requirements for patentability. Indeed, the first step in any validity-related determination—regardless of whether during the prosecution or enforcement phase—is claim construction. A court would have quite a difficult time determining, for example, whether the claimed invention had previously been described in a printed publication without an articulation of the invention at hand.
- The objective of the Federal Circuit’s creation in 1982 was primarily to bring predictability and uniformity to patents. And as the court began fulfilling those goals, the amount of patent litigation markedly increased, including an increase in patent cases tried before a jury. These lay juries typically displayed a limited ability to comprehend and resolve intricate scientific questions and interpret the technical terms of a patent claim. , 736 F.2d 666 (Fed. Cir. 1984) (holding that the jury’s implicit interpretation of the term “recovered liquid hydrocarbon absorbent” was inconsistent with other claim language, the patent’s specification and file history, and expert testimony). A jury’s unbridled discretion in interpreting a patent’s claims threatened to undo much of the predictability achieved through the unification of patent appeals into a single court. Recognizing the problem, the Federal Circuit attacked it head on. In one of its most important cases, the Federal Circuit...
- decision primarily focused on the role of the jury. The Seventh Amendment states: “In Suits at common law, where the value in controversy shall exceed twenty dollars, the right to a trial by jury shall be preserved.” U.S. CONST., AMDT. 7. Under Seventh Amendment jurisprudence, however, a right to a jury arises only for factual issues decided by a jury at common law in 1790—that is, at the date of the amendment’s adoption. A review of patent adjudication before 1790 disclosed no analogue to modern claim construction. This result was not surprising, as patent claims first appeared in 1836 and did not gain their modern importance until 1870. Without a pre–1790 analogue, the Supreme Court resolved the Seventh Amendment issue on the basis of practical considerations: judges could do the job better than juries.
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Chapter 15. Remedies 76 results (showing 5 best matches)
- Beyond compensating a patent owner for infringement, however, damages theories also significantly influence substantive patent law. The availability and amount of damages informs not only an applicant’s claiming strategy but also the administrative practices of the Patent and Trademark Office. Remedies also flesh out the interaction of patent law and other areas that regulate competition amongst corporations, such as antitrust and unfair competition. In short, the remedial aspects of domestic patent law also significantly affect the substance of the property rights.
- Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe...
- The very nature of the patent right is the right to exclude others. Once the patentee’s patents have been held to be valid and infringed, he should be entitled to the full enjoyment and protection of his patent rights. The infringer should not be allowed to continue his infringement in the face of such a holding. A court should not be reluctant to use its equity powers once a party has so clearly established his patent rights.
- Not all patents claim products or devices, of course. In cases where the patent claims only a method, the patentee has nothing physical or tangible to mark. In such a case, the marking statute does not apply; the patentee may recover damages without supplying actual notice to the infringer. But where the patent claims (and the patentee asserts) both product and process claims, the law has reached varied results. For example,
- An injunction is a critical part of patent law. In fact, one of the earliest pronouncements of the Federal Circuit related to its importance:
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Chapter 2. Patent Acquisition 87 results (showing 5 best matches)
- Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
- Aside from the creation of the Court of Claims and Patent Appeals (CCPA), which was granted jurisdiction over appeals from the Patent Office in 1929, statutory patent law remained largely untouched until the seminal Patent Act of 1952. This monumental achievement both codified much of the common law and also reoriented the law in important areas such as obviousness and functional claiming.
- The Patent Office thus plays an important gate-keeping function. Stated otherwise, the PTO facilitates an efficient and trustworthy patent system by preventing the issuance of undeserving patents. Without rigorous examination, so-called scarecrow patents would raise costs of doing business, either in extracting preventable royalty payments or forcing litigation to invalidate worthless patents. During examination, the Patent Office applies the substantive requirements of patent law: eligibility, utility, novelty, nonobviousness, adequate disclosure, and definiteness. Importantly, even if a patent issues, the mere fact of issuance does not preclude future challenges based on these substantive requirements. An affected party has recourse through litigation or through limited post-grant procedures at the Patent Office.
- In 1999, for the first time, changes in the Patent Act seemed to reflect the value of harmonizing U.S. law with intellectual property standards around the world. American Inventors Protection Act, Pub. L. No. 106–113, 113 Stat. 1501 (1999). The most noteworthy changes accommodate U.S. law with European and Japanese standards, including a first user defense to infringement, the publication of pending applications 18 months from the priority date, and reexaminations of issued patents. The publication of pending applications marks a significant departure from the prior policy of maintaining the secrecy of pending applications, which dated back to the Patent Act of 1790. Moreover, reexamination, which provides an alternative to challenging a patent’s validity in court, marked the first step towards an administrative opposition system.
- Three sources provide the procedures governing the prosecution of a patent: the Patent Act as codified in 35 U.S.C. § 1 , administrative rules as set forth in 37 C.F.R. § 1.1 , and the Manual of Patent Examining Procedure (MPEP). Although the MPEP is a publication of the Patent Office, it does not set out binding law, even if courts sometimes cite its provisions as persuasive authority.
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Chapter 9. Adequate Disclosure 55 results (showing 5 best matches)
- In fact, patent law now excludes a failure to comply with the best mode requirement from a defense under 35 U.S.C. § 282 to an allegation of patent infringement. Specifically, “failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.” 35 U.S.C. § 282(3)(A).
- Although firmly entrenched in the Patent Act, the best mode requirement is a misfit for a number of reasons. To begin with, best mode is really a “trap for the unwary.” , 301 F.3d 1306, 1325 (Fed. Cir. 2002) (Rader, J., concurring). After all, the best mode requirement is largely self-enforcing. Any inventor with even a passing knowledge of patent law would never fall into the best mode trap because nondisclosure of a critical trade secret within the best mode requirement places the value of the entire patented invention at risk—a risk beyond the requirements of § 112. After all, competitors can, and invariably will, discover the undisclosed trade secret and claim it in a separate patent application. When that application ripens into a patent, the competitor will have a blocking patent capable of compromising the value of the original patent. Therefore, the best mode requirement is unnecessary; an informed patent applicant will never withhold a genuine best mode.
- The third portion of the enablement test limits the amount of work or effort by a person of ordinary skill in the art that the patentee may reasonably rely upon to supplement the patent’s disclosure. Because the enablement rule permits some, but not unduly excessive, experimentation, this part of the test is again influenced by the nature of the scientific field. In Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569 (Fed. Cir. 1984), the Federal Circuit reviewed a determination that claims directed to emulsion blasting agents (explosives detonated by a high strength explosive primer) were not invalid for lack of enablement. The patent disclosed a large number of ingredients–salts, fuels, and emulsifiers–that combined to form thousands of potential emulsions. The patent, however, did not identify the operable, as opposed to the inoperable, combinations. Without specifying any working examples, this patent might seem to have a fatal flaw. To the contrary, the court...
- In fact, not only universities and garage inventors fall into the best mode trap, but also foreign inventors because the United States is one of the few countries with a best mode requirement. Therefore, a foreign inventor who intends on applying for a patent in his country must include information pertaining to the best mode in his foreign priority application. Although filing in a country without a best mode requirement, the foreign inventor risks losing priority if he changes his application upon entry into the U.S. (A foreign inventor may, of course, supplement his disclosure to conform with the best mode requirement prior to filing in this country; however, he would then not be entitled to priority back to his foreign application under § 119.) United States patent law thus creates extra burdens or traps for foreign applicants.
- Case law has generated a separate disclosure doctrine to complement enablement. This doctrine, the written description requirement, emerges from the same phrases in § 112. This doctrine has its origins in preventing a patent applicant from adding new subject matter to his specification—either in the claims or the description—once filed. The written description doctrine thus polices priority by ensuring that an inventor may not improperly amend a pending application to claim later technological advances. In § 132, the Patent Act expressly proscribes the addition of new matter to a pending application. The courts initially used § 112, first paragraph, as the mechanism to enforce § 132.
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Chapter 3. Patent Eligibility 48 results (showing 5 best matches)
- Even though these medical-related methods are eligible for patenting, physicians objected to the patenting of surgical procedures as such. They raised a chorus of concern about potential threats to public health in the event of an injunction on a medical procedure, about potential effects on ethical obligations of physicians to publicize medical advances, about potential increases in the cost of health care, about potential interferences with peer-reviewed medical procedures, and about potential invasions of privacy during enforcement of a medical method patent. In response, Congress added paragraph (c) to 35 U.S.C. § 287, a section of the Patent Act related to remedies (discussed in Chapter 15), and eliminated any remedy, including injunction, damages, and attorney fees, due to a medical practitioner’s performance of a medical activity. Specifically, section 287(c) defines “medical activity” as “the performance of a medical or surgical procedure on a body,” excluding “(i) the use of a
- realigned the law of patent eligibility to more accurately reflect the breadth of the Patent Act. In , the Supreme Court precluded an analysis that subtracts patent ineligible components from the claim before measuring patentability. A claim may qualify as patentable when the inventive advance in the claim is the part that standing alone would not be patent eligible. Thus, even though Sir Isaac Newton’s laws of mechanics would be abstract and ineligible, their application to make new machines or technical processes would qualify as patentable because the claim as a whole would be nonobvious. In and disallowed claims that recited a newly discovered natural phenomenon combined with otherwise known elements.
- The historic common law standard for determining eligibility—“manner of new manufacture”—flows from the words of the famous Statute of Monopolies. The United States broke away from the common law tradition in 1790, followed by Canada in the nineteenth century. This U.S. approach defines eligibility positively. The European Patent Office, in contrast, takes a different approach and defines what cannot be patented rather than what can be patented.
- In any event, the Court’s opinion is laced with self-impeaching reasoning. For instance, the Court states, “It is conceded that one may not patent an idea.” 409 U.S. at 71. To the contrary, all patents are ideas. The Supreme Court either confused patent law with copyright law or meant to say “one may not patent an idea.” At another point, the Court opined, “The mathematical formula involved here has no substantial practical application except in connection with a digital computer…” The Court seems to belittle the invention as limited to improving a mere digital computer, which may, of course, qualify as the most revolutionary advance of the twentieth century.
- Although sometimes (often pejoratively) referred to as the case that opened the floodgates to patenting business methods, is best understood as the case that explicitly confirmed the patent eligibility of computer-implemented inventions. In , the Federal Circuit examined the patent eligibility of a computer system to reallocate investment income to maximize tax benefits. Instead of engaging in an analysis of transformation or algorithm characterizations, the court returned to basic statutory construction. The invention recited a statutory process that qualified for patenting unless it fell within one of the three prohibited categories (laws of nature, natural phenomena, and abstract ideas). The only possible exclusion for a mathematical algorithm or a computer process is abstractness. An invention is not abstract if useful. The claimed invention had a practical utility and therefore was not abstract.
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Chapter 14. Additional Defenses 53 results (showing 5 best matches)
- (5) condition[ ] the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.
- In , the patented technology related to a machine for depositing salt tablets into canned goods, which facilitated control over the amount of salt added to each can. Both the patentee and accused infringer made salt-deposition machines as well as the salt tablets themselves, although the Court noted that the competition in the sale of salt tablets was irrelevant. Rather than selling its patented machines, the patentee leased them on the condition that the lessees only purchase and use the patentee’s salt tablets. The Court thus reasoned that the patentee was restraining trade in an unpatented article, the salt tablets, through its patent covering only a salt-deposition machine. In expanding patent misuse’s application to noncompetitors, the Court explained: “It is the adverse effect upon the public interest of a successful infringement suit, in conjunction with the patentee’s course of conduct, which disqualifies him to maintain the suit, regardless of whether the particular...
- In addition to a delay in filing a suit for infringement, a patentee may forfeit rights to an invention as a result of a delay in prosecuting the applications that matured into the patent. , 264 U.S. 463 (1924). Although prosecution laches was recognized long ago, for many years it remained a forgotten defense to the problem of so-called “submarine patents.” Although a patent’s term now expires 20 years after the earliest effective filing date, it once expired 17 years after the date of issuance. Under that regime, an inventor could file an application to obtain an early date of priority, then, through the use of continuing applications permitted by the Patent Office’s rules, prolong prosecution until the inventive technology matured in the marketplace. The cunning inventor would then amend the claims to cover products already on the market and sue the competition.
- The Federal Circuit now requires some anticompetitive effect, even if not rising to an antitrust violation, for a misuse violation. In fact, current law appears to have cabined patent misuse to two limited instances: using the market power generated by a patent to restrain competition in an unpatented field and extending the term of a patent beyond its , 124 F.3d 1419 (Fed. Cir. 1997). More recent patent misuse cases from the Federal Circuit continue to cabin the doctrine as well. , 424 F.3d 1179 (Fed. Cir. 2005). For example, the Federal Circuit affirmed the ability of a patentee to selectively license its patents.
- Courts and parties often address laches and estoppel concurrently, even though they entail different (yet nonetheless related) concepts. Even though they are not unique to patent law, patent-specific cases have recurring fact patterns that have generated a notable body of case law. Although infrequently
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Chapter 5. Anticipation 75 results (showing 5 best matches)
- Oftentimes, the description of an invention in a patent or patent application serves as a printed publication. The United States Patent and Trademark Office publishes all patents upon issuance, but most patent applications appear in published form 18 months after their filing date. Foreign patent offices typically publish all applications 18 months after filing. Upon publication, even the pre-grant publication will serve as prior art.
- Although a patentable invention must certainly be new, the statutory intricacies of novelty and other patent-barring events were traditionally among the more dense and complex in patent law. The governing provision for all patents and applications having a priority date before March 16, 2013, states:
- The secret information defined in § 102(e) may fit the designation of “inevitable” prior art. Prior art principles must accord protection to secret applications for patents. The Supreme Court firmly established this category of prior art in , 270 U.S. 390 (1926). In that case, the Court held that disclosed (even if unclaimed) subject matter in an issued patent is prior art as of its filing date, not its issue date. The second paragraph of § 102(e) codified this case. The first paragraph of § 102(e) works similarly: an issued patent that describes subject matter in a published patent application is prior art as of the filing date of the application. The statute refers to the Patent Cooperation Treaty, which is partially codified at § 351(a). (The Patent Cooperation Treaty is discussed in Chapter 16.) Section 102(e)(1) provides that a PCT application designating the United States and published in English are prior art on its filing date, while § 102(e)(2) prohibits using the filing...
- (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or
- (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
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Chapter 1. Foundations of Patent Law 33 results (showing 5 best matches)
- Natural law theory posits that the inventive labor entitles the innovator to enjoy exclusively the fruits of the new technology. Under this property-based theory, the discoverer earns a right to exclude others from use of the invention for a limited time. A corollary of this school of thought argues that patent law converts the conceptual and theoretical invention into property rights capable of valuation and trading in the market place. This aspect of patents, in turn, encourages the efficient conversion of those property rights into useful products and technology. Even more recent theories recognize patent law as a beneficial monopoly based on the public utility model. John F. Duffy,
- Entitlement theories also show that patents serve the larger economic service of converting inchoate knowledge into useful technology for public consumption. The incentives of patent law do some of their best work after invention, disclosure, and issuance of a patent. At that point, the patent system enables an inventor to raise capital to market and manufacture the invention.
- Cases & Materials on Patent Law
- Modern economic theorists, for instance, opine that patents promote an efficient use of scarce resources. In this case, the scarce resource is the technical knowledge that patent law promotes. A scarcity of knowledge about rats, fleas, and hygiene in 1342–5, for example, cost the lives of one-third of the inhabitants of Europe in the black plague epidemic. In modern terms, the plagues of AIDS or SARS illustrate that some forms of knowledge remain far too scarce.
- This brief overview will not discuss many less comprehensive rationales for patent law. For instance, academics have offered rent dissipation and races to invent as justifications for aspects of patent law. Mark F. Grady & Jay I. Alexander,
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Chapter 7. Novelty: Prior Invention 94 results (showing 5 best matches)
- (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a)[.]
- As introduced in Chapter 5, this chapter discusses the novelty requirements set forth in first-to-invent’s § 102, specifically paragraphs (a), (e), (f), and (g). These paragraphs all concern ways to ascertain whether the subject matter has already been invented. First-to-invent’s § 102(a) straightforwardly states the essential first-to-invent rule that was fundamental to novelty in the United States. In particular, an inventor was entitled to a patent unless “the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.” First-to-invent’s § 102(a) thus sets forth that a public disclosure will preclude a later patent for the same subject matter. The four categories—knowledge by another in the United States, use by another in the United States, patented, or described in a printed publication—are examined in greater detail in Chapter 5.
- Although related to a priority fight under first-to-invent’s § 102(g), first-to-invent’s § 102(e) prevents the patenting of subject matter described in an earlier application, so long as that earlier application either matures into a patent or is published prior to grant. Thus, while § 102(g) focuses on the claimed invention, § 102(e) focuses on the disclosure of a patent or patent application. The section proscribes the patentability where
- These same principles reappear under first-inventor-to-file’s § 102(a)(2), which states that a person is entitled to a patent, unless “the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.” The substantive differences, if any, between first-to-invent’s § 102(e) and first-inventor-to-file’s § 102(a)(2) will likely be resolved through future litigation.
- In contrast to Chapter 6 discussing statutory bars, the novelty requirements in this chapter are not universally applicable across the world. In fact, these rules are entirely unique to the United States’ first-to-invent system. These provisions add complexity to domestic patent law and increase the transaction costs of worldwide patenting, although the complexity should decrease as the United States transitions to a first-inventor-to-file system.
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Chapter 6. Statutory Bars 71 results (showing 5 best matches)
- The justification for the statutory bars becomes apparent by comparing the first-to-invent patent system formerly employed in the United States and the first-to-file patent system employed by the rest of the world. Under a first-to-file system, an inventor who files a patent application for a particular invention first obtains the patent, even if someone else previously invented the technology. This system, of course, encourages a race to the patent office. In the United States, on the other hand, the first inventor obtains the patent, even if someone else filed a patent application earlier on the same invention. This system, of course, tolerates or even encourages an inventor to delay filing a patent application. Thus, to ensure an inventor does not delay disclosure and defeat the objectives of the patent system, the Patent Act included statutory bars.
- Under first-to-invent’s 35 U.S.C. § 102(d), an inventor is not entitled to a patent for an invention if “the invention was first patented or caused to be patented, or was the subject of an inventors’ certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventors’ certificate filed more than twelve months before the filing of the application in the United States.” That is, applicants may confront a bar if they file for patent protection in a foreign country more than a year prior to the filing date of their U.S. patent application and the foreign application matured into a patent before the U.S. filing date.
- Under first-to-invent’s 35 U.S.C. § 102(b), a patent is anticipated if “the invention was patented or described in a printed publication in this or a foreign country … more than one year prior to the date of the application for patent in the United States.” This provision thus makes the United States’ erstwhile first-to-invent system analogous to a first-to-file system for any invention patented or described in a printed publication more than one year before the filing date of the application for patent. That is, the section triggers the running of a statute of limitations of sorts when an invention is disclosed in a printed publication anywhere in the world.
- Inventors should not be able to place their inventions in the public domain and then when someone else decides to make use of the invention, file an application for patent in an attempt to exclude the third party from using the invention. Rather the Patent Act—under both the first-to-invent and first-inventor-to-file regimes—permits only a single year during which an inventor may perfect the invention before filing. In , the Supreme Court concluded that because the inventor put the invention into public use more than seven years before filing a patent application, the patent was invalid.
- For example, in
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Chapter 8. Nonobviousness 112 results (showing 5 best matches)
- The procedures to obtain a patent invariably involve the obviousness test, and obviousness is a central patentability doctrine at the Patent Office. During infringement litigation, a defendant may also put up a defense of patent invalidity. Obviousness is a central doctrine of patent validity in court proceedings. Patentability, however, differs in important respects from validity.
- case began when Graham sued the Deere Corporation for infringement of the ‘798 patent on a plow with a spring clamp. The defendant questioned the validity of the patent in light of an earlier patent, the ‘811 patent, to the same inventor, Graham. The prior art patent was the same plow with one variation—a hinge plate was moved from one side of the shank to the other. This seemingly slight change, however, meant that the shank would not break when it hit a stone—a significant improvement in the performance of the plow. Graham had successfully weathered validity challenges, including a prior appeal to a regional circuit, and had asserted his patent against other infringers before this case. Nonetheless the Supreme Court upheld a determination that the ‘798 was invalid.
- featured rather simple technology—an adjustable throttle pedal for an automobile. Teleflex owned the Engelgau patent (U.S. Pat. No. 6,237,565) which combined an adjustable pedal with an electronic sensor to measure the pedal depression. Adjustable pedals, of course, make the throttle more accessible to drivers of different heights. Electronic sensors on those pedals measure movement without cumbersome mechanical cables. Both of these features were in the prior art. An Asano patent described an adjustable pedal like that in Engelgau; a Rixon patent (as modified by a Smith reference) described the particular electronic calibration features of the Engelgau patent. Asano incidentally was not before the PTO when it granted the Engelgau patent.
- In this case, the Asano patent does not address the same problem as the ’565 patent. The objective of the ’565 patent was to design a smaller, less complex, and less expensive electronic pedal assembly. The Asano patent, on the other hand, was directed at solving the “constant ratio problem.”
- In desperation, the Patent Office and the patent bar turned to Congress. The result was the 1952 Patent Act. The 1952 Act sets forth the objective test for obviousness discussed earlier. Patentability hinged on factual evidence about the likelihood that a person of ordinary skill in the art would have found the subject matter obvious at the time of the invention.
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Chapter 4. Utility 31 results (showing 5 best matches)
- This requirement might seem to contradict common sense. After all, a rational inventor would not invest in research and development and then pour more resources into prosecuting or enforcing a patent if the invention has no use. Even if an irrational inventor undertook those expenses, enforcing an exclusive right to useless subject matter would bring no damages. Thus, it is no surprise that this statutory requirement has not often proven important in patent case law. When utility does appear in litigation or policy disputes, it may indicate some agenda other than preventing inventors from acquiring and enforcing useless patents on useless technology.
- Use of an invention does play an important role in patent jurisprudence, but not in the sense of the ultimate usefulness of the innovation, which, as suggested above, is a requirement enforced more by market realities than by judicial intervention. The use provision of significance appears in 35 U.S.C. § 112(a). This provision (discussed in Chapter 9) ensures that each patent contains sufficient description to enable one of ordinary skill in the art to make and use the invention. This statutory provision presumes, of course, that every invention worthy of a patent has some describable use.
- at 1367. The court then explained that the patent laws do not serve to prevent deceptive trade practices. Accordingly, deceptive or fraudulent inventions do not lack utility. Beneficial utility simply does not apply any more in patent cases.
- Perhaps for this reason, utility produced little case law until the rise of biotechnology. The leading treatise on patent law at the end of the nineteenth century had little to say about the usefulness requirement. This treatise reached for some general language that utility means more than “a mere curiosity, a scientific process exciting wonder yet not producing physical results, or [a] frivolous or trifling article not aiding in the progress nor increasing the possession of the human race.” 1 W. Robinson, T
- Many of the world’s patent systems have a requirement of industrial application rather than utility. Both Europe and Japan require industrial application as a prerequisite for patentability. The importance of this requirement varies depending on other features of the patent system.
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Chapter 10. Claims 111 results (showing 5 best matches)
- As noted earlier, a product patent is more valuable than a process patent because it gives the patentee an exclusive right to the new structure however made or used. A product generally can be made by many processes. A mere change in the order of the steps or slight alterations in starting materials or catalysts can constitute a new process (sometimes with more efficient results). Thus a process patent can often be circumvented with a new process to reach the same result, but a product patent is not so easily avoided.
- A patent is, quite simply, the right to exclude others from making, using, selling, offering to sell, or importing inventive technology. But where does that exclusive right begin and end? Before testing for either infringement or validity, patent law requires first a definition of the boundaries of the invention. Claims, which define its boundaries, are therefore a patent’s most critical component. In fact, the Federal Circuit has proclaimed, quoting perhaps its most celebrated member, the late Judge Giles S. Rich: “the name of the game is the claim.”
- In more modern practice, of course, an inventor can practically always claim a product according to its structure. A product claim is very strong and desirable because it protects that claimed structure however made or used. Thus, if another innovator makes the same product by a new process (even a more efficient process), the first inventor of the structure retains the exclusive right to that structure. To illustrate with a hypothetical, an inventor could make an excellent new shoe polish out of a petroleum byproduct and obtain a product patent on the new entity. If another innovator finds a cheaper way to make the patented polish out of timber byproducts, the first inventor still has the exclusive right to the new product. The second innovator may obtain a patent on the timber byproduct fabrication process, but not a patent on the existing structure.
- Although under the doctrine of equivalents prior art restricts the extent to which patent protection can be equitably extended beyond the claims to cover an accused device, the policies underlying that concept are not served by restricting [§ 112, ¶ 6 claim in the same manner. Claim limitations may, and often do, read on the prior art, particularly in combination patents.
- Patent Office guidance makes each claim the predicate of a single sentence that begins with one of the following phrases (or something similar): “I claim”; “The invention claimed is”; or “What is claimed is.” Manual of Patent Examining Procedure § 608.01(m). Although not a statutory requirement, this form convention falls within the Patent Office’s discretion under § 112. court, in fact, lauded the one-sentence rule:
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Title Page 4 results
Dedication 1 result
Outline 65 results (showing 5 best matches)
Index 35 results (showing 5 best matches)
Advisory Board 13 results (showing 5 best matches)
- Publication Date: December 5th, 2012
- ISBN: 9780314279996
- Subject: Intellectual Property
- Series: Nutshells
- Type: Overviews
- Description: This Nutshell provides a succinct description of the fundamentals of U.S. patent law. Ranging from the acquisition of patent rights to their enforcement, it contains an overview of relevant statutes, rules, and cases that collectively define this area of intellectual property law. Topics include claim construction, obviousness, anticipation, written description and enablement, infringement, remedies, and other notable doctrines. Patent law has evolved quickly in the past few years. This Nutshell captures those changes and relates them well to the overall fabric of intellectual property law. This reference is suitable for use by those with a beginner’s knowledge of patent law, but it has sufficient depth to be instructive for every practitioner in this exciting and dynamic field.