Chapter 4 Novelty 71 237 results (showing 5 best matches)
- An example illustrates the application of pre-AIA § 102(d). Suppose that Yamamoto, the inventor of an underwater jetpack, filed an application at the Japanese Patent Office on March 15, 2005. The Japanese application matured into an issued Japanese patent on November 3, 2006. If Yamamoto had not filed his U.S. patent application at the USPTO as of November 3, 2006, the date of the Japanese patent grant, the pre-AIA § 102(d) bar would be triggered. Note that a U.S. filing before that date, but after March 15, 2006, would not have been problematic, because although it would have been more than 12 months after the filing date of the Japanese application, the Japanese patent would not yet have issued.
- Unhappily, the major patent statutes of the world diverge with regard to the grace period, with the U.S. approach being the most lenient or generous to the procrastinating inventor. Indeed, the U.S. approach stands in marked contrast to the “absolute novelty” provisions of the European Patent Convention. Under the European regime, disclosure of an invention even one day before the filing date bars patentability. The Japanese system provides for a 12-month grace period that applies only to the inventor’s own activities. Under the Japanese patent law, then, disclosure by a third party at any time prior to the filing date acts as a bar. Thus, while pre-filing date activities may not prejudice the ability of an inventor to get a U.S. patent under post-AIA § 102(b), so long as they are not before the “critical date,” they may seriously compromise the possibility of obtaining patents abroad—a reality that counsels in favor of prompt filing of patent applications.
- In reality, of course, no Great Library exists, and even if it did examiners lack the time to canvas the waterfront of potential prior art in this sweeping manner. Nonetheless the Patent Act commands this inquiry. While patent examiners making administrative determinations of patentability often fall short of this ideal, courts may come somewhat closer to it when they adjudicate the validity of an issued patent during infringement litigation.
- Most relevant to the present discussion was whether metabolite patents were anticipated by earlier patents on the precursor medication. The patent at issue in claimed descarboethoxyloratadine (“DCL”), a non-drowsy antihistamine. Schering had previously patented loratadine, the active ingredient of the best-selling drug CLARITINpatent on DCL and then asserted it against generic competitors that hoped to market their own versions of CLARITIN . During infringement litigation, the trial court held that Schering’s prior art loratadine patent inherently anticipated the DCL patent.
- At first glance, the fact that a third party had completed sales of the claimed invention in the United States prior to the critical date seems to call for a straightforward application of the “on sale” bar. Patentee Abbott offered an interesting argument, however. It seems that prior to the litigation, nobody actually knew that Byron had sold the particular crystalline form of terazosin hydrochloride that was later claimed in the
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Chapter 14 Patent Law in International Perspective 499 128 results (showing 5 best matches)
- An example demonstrates the workings of the Paris Convention priority period. Suppose, for example, that inventor Dr. Snikta files a patent application at the USPTO on January 19, 2019, claiming a method of making low-carbohydrate pizza dough. Snikta then files a patent application claiming the same invention in the Japanese Patent Office on January 10, 2020. As part of his Japanese application, Snikta informs the Japanese Patent Office of the earlier U.S. application. Because Japan is a party to the Paris Convention, the Japanese Patent Office will treat Snikta’s application as if it had been filed on January 19, 2019. As a result, information that entered the public domain after the U.S. filing date would not prejudice the inventor’s Japanese application. Sales that began in Japan on March 1, 2019, for example, would not limit Snikta’s ability to obtain a Japanese patent.
- In contrast, many other patent-granting states provide more limited grace periods, or no grace periods at all. In Europe, any sales or publication of an invention anywhere in the world prior to the filing date defeats the patentability of an invention. The Japanese patent system includes a 12-month grace period tied only to the activities of the inventor. Under the patent law of Japan, any disclosures of an invention made by a third party even one day before the filing date defeats the novelty of that invention.
- One significant consequence of the independence of national patents is that they must be enforced individually. Even different national patent instruments with identically drafted descriptions, drawings, and claims do not stand or fall together. A competitor who succeeds in invalidating one national patent may face the prospect of repeating the effort within the courts of another nation. Similarly, the successful enforcement of a patent in one forum may simply signal the start of patent litigation elsewhere.
- Japanese Patent Act, Article 29(1).
- Prior to the adoption of the Paris Convention, most nations applied a principle of patent dependence against foreign inventors. This meant that domestic patents would expire at the same time any foreign patent covering the same invention lapsed. Under this scheme allowing one patent to lapse would amount to a global forfeiture of patent rights. In such a world, patent proprietors had to pay maintenance fees and otherwise vigilantly protect patent rights in every nation, even though marketing the invention might prove feasible only in some subset of them.
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Chapter 7 Patent Prosecution 229 229 results (showing 5 best matches)
- In lieu of taking more serious measures to oppose an issued patent, individuals may simply cite patents or printed publications to the USPTO. The agency will then include this submission in the patent’s official record. Interested members of the public may also include statements explaining the relevance of the prior art to the patent, as well as statements made by the patent proprietor during litigation about the scope of the patent. Under § 301 of the Patent Act, all of this material will also be placed within the patent’s official record.
- Others are critical of IPRs. Many patent owners view these proceedings as being biased against them and believe that they have significantly eroded the confidence of innovative industry in the U.S. patent system. They observe that most patents involved in IPRs are also subject to litigation in the federal courts, a development that increases the expense and complexity of patent enforcement. They also believe that the rapid pace of these proceedings, as well as the possibility of multiple IPR petitions being filed against a single patent, unfairly challenge patent owners.
- Double patenting may occur when the same inventor obtains two issued patents directed towards the same inventive concept, in which case it will be up to a court to strike down the duplicative patent when and if it is asserted in infringement litigation. However, the USPTO also considers the double patenting doctrine during prosecution. As a result, an applicant may face a double patenting rejection based upon either a granted patent or another pending application.
- The Patent Act provides for two sorts of disclaimers. Applicants employ the first kind, terminal disclaimers, in order to avoid double patenting rejections. Terminal disclaimers are discussed in section 7.8.2 of this Chapter. Patentees file the second kind, statutory disclaimers, in order to eliminate invalid claims from otherwise sound patents. A statutory disclaimer effectively cancels the claim from the patent. Failure to file a statutory disclaimer does not render the remaining claims of a patent invalid or unenforceable. The Patent Act merely provides that a patentee may not recover costs for a litigation unless he filed a disclaimer of any invalid claims with the USPTO prior to commencing litigation.
- Prosecution of patents is the most frequent professional duty of patent practitioners and is also the task assigned to most entry-level patent lawyers. However, even those engaged exclusively in patent litigation need to be thoroughly familiar with the events at the USPTO that lead to the grant of any patent which is sued upon or defended against, because those events can greatly affect the scope of protection afforded to the patent and the availability of various defenses. Attorneys who do not routinely practice patent law may also find themselves more frequently approached by inventors wishing to obtain a patent than by patent proprietors wishing to sue an alleged infringer. Knowing the rudiments of patent practice helps such a lawyer provide basic counsel to the client. The USPTO is under the policy direction of the Secretary of Commerce. A Director, who is appointed by the President with the consent of the Senate, heads the USPTO. The Secretary of Commerce also appoints a
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Chapter 11 Patent Litigation 411 76 results (showing 5 best matches)
- During patent enforcement litigation, an accused infringer has the option of asserting that the patent-in-suit is invalid. If the courts agree that the patent was improvidently granted, then that litigation is over. In the event that the patent proprietor later attempts to assert the same patent, there has never been a question that the same defendant could defeat the cause of action through the doctrine of issue preclusion. Where the patentee attempts to assert that same patent against persons other than the original defendant however, the situation is a bit more complex. In situations of this sort, the law has evolved over time.
- and instead embraced the doctrine of defensive non-mutual issue preclusion. The Court recognized that patent litigation was expensive and saw no indication that one particular court would issue more accurate patent judgments than another. Further, as plaintiffs, patent proprietors often enjoy considerable flexibility in choosing when, where and whom to sue. As a result, patentees should not ordinarily be unfairly surprised, or face unusual difficulties in amassing evidence, in the first litigation. The Court therefore concluded that accused infringers should not have to spend the time and incur the cost of defending a charge of infringement based upon a patent claim that had already been invalidated in prior litigation. So long as the patentee has a “full and fair chance to litigate the validity of his patent in the earlier case,” then even a stranger to the earlier lawsuit may defend against a charge of patent infringement through the doctrine of issue preclusion.
- Although hardly unique to the patent law, the equitable defenses of laches and equitable estoppel have recently been of considerable importance to patent litigants. In an era where patent litigation has become an increasingly lucrative endeavor, patentees have demonstrated a renewed willingness to review their portfolios in order to consider whether any claims are being infringed. Sometimes this effort results in the “dusting off” of patents that are near expiration or have in fact expired, with litigation commenced regarding alleged infringements that supposedly began years before.
- The patent law has nonetheless developed a number of particularized enforcement rules based either upon patent-specific statutes or pointed judicial application of general principles within the patent context. This chapter reviews the more noteworthy of these litigation topics, including standing, jurisdiction, venue, Federal Circuit choice of law, issue preclusion, and the defenses of laches and equitable estoppel.
- rule is a one-way street. It bars patentees from bringing any other suits on patents that have been conclusively held invalid. However, alleged infringers are always free to argue that the asserted patent is invalid even though, in an earlier litigation against a different defendant, the patent survived the identical invalidity challenge.
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Chapter 13 Specialized Patent Legislation 461 134 results (showing 5 best matches)
- In particular, the statutory steps include: (1) the follow-on applicant must disclose its application to the brand-name firm; (2) each party must identify pertinent patents; (3) the parties must exchange briefings on the validity and possible infringement of those patents; (4) the parties must negotiate which patents will be subject to litigation; and (5) a simultaneous exchange of patents designated for litigation in the event the parties could not reach agreement. Congress designed these provisions with the intention of narrowing the issues to be presented for judicial resolution and encouraging prompt litigation. A fuller presentation of the Patent Dance may be found elsewhere.
- The BPCIA establishes specific rules for the resolution of patent disputes involving follow-on biologics. These rules require the brand-name firm and the follow-on applicant to engage in a number of interactions prior to the commencement of litigation. Perhaps because of their complex nature, these statutory provisions are, as we noted above, often termed the “Patent Dance.”
- , the filing of an ANDA with a paragraph IV certification constitutes a “somewhat artificial” act of patent infringement. The Hatch-Waxman Act requires the ANDA applicant to notify the proprietor of the patents that are the subject of a paragraph IV certification. The patent owner may then commence patent infringement litigation against the ANDA applicant in federal district court. This charge of infringement under is technical in nature—roughly analogous to requesting a declaratory judgment. At this stage the generic manufacturer has done nothing more than request FDA approval to market a drug. If the patentee’s charge of infringement is successful, however, it may prevent the marketing of that generic equivalent until the date the patent expires.
- The term of a design patent is 15 years from the date the USPTO issues the patent. As with utility patents, design patents may claim priority from a foreign design application. However, in contrast to the 12-month period of priority applicable to utility patents, the period of priority is set at 6 months for design patents.
- The Hatch-Waxman Act also provides for the extension of patent term. Ordinarily, the patent term is set to 20 years from the date the patent application is filed. The Hatch-Waxman Act provides that for pharmaceutical patents, the patent term may be extended for a portion of the time lost during clinical testing. In particular, the patent holder is entitled to have restored to the patent term one-half of the time between the time clinical testing begins
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Chapter 1 Introduction to the Law of Patents 1 81 results (showing 5 best matches)
- The nations of the earth have yet to agree upon a unified legal regime governing patent rights or, sadly, much else. Consequently there is no such thing as a “global” patent. Innovators must secure and enforce patent rights within each particular jurisdiction where they desire protection. Further, the reach of a particular patent extends only within the borders of the nation recognizing the right. A patent granted in the United States, for example, cannot be the basis of infringement litigation in Japan.
- As noted previously, despite increasing international trade and the longstanding recognition that technology knows no borders, the nations of the earth have yet to agree to a global patent system. Patent prosecution and litigation therefore occurs on a piecemeal, jurisdiction-by-jurisdiction basis. Still, the desire to facilitate multinational patent acquisition and harmonize national laws has been keenly felt, and has led to several international agreements concerning patents. The United States has joined three such agreements that we briefly describe here, and delve into more deeply in Chapter 14.
- Observing that the registration system of the 1793 Act had sometimes encouraged duplicative and fraudulent patents, Congress restored an examination system with the Patent Act of 1836. The 1836 Act created a Patent Office within the Department of State and provided for the filing and formal examination of patent applications. The 1870 Act largely maintained the provisions of its predecessor, but at several points stressed that patentees define their proprietary interest in a distinctly drafted claim. Litigation under these two statutes frequently culminated at the Supreme Court, resulting in opinions that established the doctrines of nonobviousness, enablement, experimental use, and other fundamental pillars of contemporary patent law.
- Patents do not affirmatively allow their owners to exploit the patented product in the marketplace, however. marketing of a patented product is subject to the constraints of property rights, consumer protection statutes, and other laws. Because patents do not provide a positive right to practice a patented invention, some commentators refer to the patent right as a “negative” right to exclude.
- Patents confer the right to exclude others from making, using, selling, offering to sell, and importing the protected invention. Much like a deed of real property, patent instruments define the boundaries of the “technological territory” that belongs to the patent owner. The patent owner may bring suit to enjoin infringement by “trespassers” who exploit the patented invention without authorization. Put differently, others have a duty to avoid practicing a patented invention without the permission of the patent owner.
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Chapter 5 Nonobviousness 151 81 results (showing 5 best matches)
- Consider the hypothetical Pervasive Polymers, Inc., a company that enjoys a 70% market share in the polymer market. No other company in that market has more than a 2% market share. During infringement litigation, Pervasive Polymers argues that it has licensed the asserted patent to 20 different competitors. Twenty is an impressive number of patent licenses, but suppose the facts further indicate that these licenses involved not just the patent which is the subject of the litigation, but rather the entire Pervasive Polymers portfolio of over 1200 patents. In addition, the terms of the licenses called for extremely reasonable royalty rates. In such a case, the aggressive licensing activities of Pervasive Polymers are not likely to be given weight during the nonobviousness analysis. Without further evidence, the court cannot assume that the licensees were primarily interested in using the asserted patent, as compared to another patent within the vast Pervasive Polymers portfolio....patent
- The existence of licenses under the patented invention suggests that other industry actors believed the invention to be nonobvious. Otherwise, they would have challenged the validity of the patent in the courts or at the USPTO, instead of incurring the obligation to pay royalties. In enforcing the nexus requirement, the courts will consider whether the competitors took a relatively inexpensive license simply to avoid costly litigation, did so as part of a larger cross-licensing arrangement, or for other reasons that do not support the nonobviousness of the claimed invention.
- Graham’s own, earlier ’811 patent served as prior art against the ’798 patent-in-suit under pre-AIA § 102(b). More specifically, the Patent Office issued the ’811 patent on January 10, 1950, more than one year before the August 27, 1951 filing date of the ’798 patent. As a result, even though the ’811 patent represented Graham’s own work, the Patent Office and courts appropriately considered the ’811 patent for purposes of the obviousness analysis because it met the pre-AIA § 102(b) definition.
- Greg Reilly, Rethinking the PHOSITA in Patent Litigation, 48 Loy. U. Chi. L.J. 501 (2016)
- , the Court noted that such “secondary considerations as commercial success, long felt but unresolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” The Court recognized that the secondary considerations “focus attention on economic and motivational issues rather than technical considerations and are, therefore more susceptible of judicial treatment than are the highly technical facts often present in patent litigation.”
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Chapter 10 Remedies for Patent Infringement 379 113 results (showing 5 best matches)
- Patent trials are often costly and long. For many patent owners, a preliminary injunction offers the opportunity for faster, more affordable relief that can often encourage the accused infringer to settle the case on favorable terms. Such injunctions are granted early in the litigation process and preclude the defendant from practicing the patented technology while the case is pending. However, as in other sorts of cases, patent preliminary injunctions are considered a form of extraordinary relief and are not routinely granted.
- Some district courts have ruled that, when determining a royalty rate for the infringement of a particular patent, they should also consider the royalty burden associated with other patents potentially covering the infringing product. Otherwise the damages award might overvalue the individual patent asserted in that litigation. This inquiry appears to be a complex endeavor, as identifying and predicting patents that might be asserted against a particular product is an uncertain exercise.
- The Patent Act limits monetary recovery to events occurring within the six years prior to the filing of the complaint or counterclaim for patent infringement. For example, suppose that Professor Gadget procured a patent on a method of refurbishing metal tools on April 1, 2014, based on an application filed on January 2, 2013. That patent will expire on January 2, 2033, 20 years after the filing date. Suppose further that Dr. Nefarious began using Gadget’s patented invention on March 15, 2015. Gadget does not file suit for infringement until March 15, 2025, perhaps because he lacked knowledge of the infringement, was preoccupied with developing his business, or could not previously afford the cost of litigation.
- Of the many modern Supreme Court decisions addressing the patent law, has unfairly tilted the balance between patent owners and high-tech firms. They believe that without fear that a patent owner can obtain a permanent injunction, the worst-case scenario for an infringer is to pay damages that may approximate what they would have paid at an arms-length negotiation prior to litigation.
- factor by offering evidence from which a court can infer demand for the patented invention. Ordinarily patentees submit evidence of the infringer’s sales to demonstrate demand. This factor is rarely an issue during litigation. After all, if no demand existed for the patented invention, then there would be no infringement at all. The Federal Circuit has observed, however, that the method of showing demand through infringer sales presumes that the patent owner and infringer compete in the same market for the same customers. In the event that the products of the patentee and infringer significantly differ in terms of price and/or product characteristics, the infringer’s customers would not necessarily purchase from the patentee instead of the infringer. In this sort of case, evidence of an infringer’s sales
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Chapter 12 Patent Assignments and Licenses 435 91 results (showing 5 best matches)
- Welter subsequently left Diamond and formed his own company, the defendant Ambico. After Ambico commenced the manufacture and sale of gastroenteritis vaccines, Diamond sued for patent infringement. During the litigation, the trial court held that the doctrine of assignor estoppel prevented Welter from challenging the validity of the vaccine patents that he originally owned and had transferred to Diamond.
- There is one important exception to the general rule that joint owners may exploit a patent without regard to the others. Section 281 of the Patent Act states that: “A patentee shall have remedy by civil action for infringement of his patent.” Courts have interpreted this language as requiring the agreement of each of a patent’s joint owners in order to enforce the patent through infringement litigation. Therefore, although a joint owner can manufacture, sell, license, or otherwise exploit a patented invention without regard to the other joint owners, permission of the other joint owners must be had prior to commencing an infringement suit.
- , the Supreme Court again reversed, concluding that Morton had misused its patent. The Court started from the proposition that the use of a patent to secure an exclusive right not granted by the Patent Office violated the constitutional goal of promoting the useful arts. Because such a “maintenance and enlargement” of the patentee’s rights depended in part upon successful results in infringement litigation, the courts should withhold relief where a patent was used as a means of restraining competition in the sale of unpatented products. As a holder of an exclusive privilege granted to further a public policy, an individual who used his patent to subvert that policy could not expect to gain protection from the courts.
- Traditionally courts disallowed licensee challenges to licensed patents on just this principle. This doctrine came to be known as “licensee estoppel.” A companion concept, “assignor estoppel,” prevented a person who assigned a patent to another from later claiming that the patent is invalid. As should be obvious from context, both of these are doctrines asserted by patentees who are plaintiffs in infringement or other litigation to forestall the defendant’s argument of invalidity.
- A patent owner commits misuse when he exploits a patent in such a manner as to exceed its lawful scope. Misuse cases often involve patentee licensing practices that the courts have disfavored. The key inquiry in patent misuse cases is whether the patentee has impermissibly broadened the scope of his patent with anticompetitive effect. A successful showing of patent misuse renders the patent unenforceable.
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Chapter 9 Claim Interpretation and Equivalents 337 117 results (showing 5 best matches)
- opinion devotes much attention to trial procedures, these decisions have considerably impacted the conduct of patent litigation. Viewing claim interpretation as a pure issue of law promotes a sort of summary judgment procedure in which the trial judge resolves the meaning of the claims. The district courts have differed on the proper timing of these so-called “ hearings early in the litigation. These courts hope to narrow issues and promote settlement, but often must make decisions with scant evidence before them. Other courts hear evidence of claim meaning at the same time as the infringement trial and instruct the jury on the appropriate construction just before it retires. Although this technique allows the court to receive evidence after discovery has been completed and litigation positions have been fully formed, it may prevent parties from offering testimony and argument concerning the judge’s claim interpretation at the trial level. In order to standardize the timing of
- litigation-driven claim construction, better drafted patent claims in the longer term, and ultimately, a patent law that more finely tunes the system of incentives it is supposed to regulate. These are all changes that, if realized, should be welcomed by the patent system, most of its participants, and the public.
- Experience has unfortunately taught us that infringement analyses in the patent law are as nettlesome as in any intellectual property discipline. Few claims prove so clear as to withstand the withering gaze of high stakes litigation without the exposure of an ambiguity or uncertainty. Claim interpretation issues recur so frequently because these texts are exceptionally difficult to draft. Patent practitioners must marshal considerable legal and technological skills to write claims that capture the inventor’s contribution, avoid subject matter known to the prior art, and anticipate future embodiments that others might employ. Yet financial limitations and marketplace demands for timely issuance weigh against comprehensive preparatory efforts.
- Second, assertions made by the patentee, either within the patent instrument or during prosecution, may cause the claim term to be interpreted more restrictively than usual. For example, during prosecution a patentee may have asserted that a claim term has a narrower meaning than usual in order to distinguish the claim from the prior art. During infringement litigation, the courts will hold the patentee to that more limited interpretation.
- That litigation concerned Wilson’s assertion of a patent involving a golf ball cover dimple arrangement. The dimples were placed in such a manner as to allow the ball to fly higher and farther. In particular, the claims required that no dimples intersect with six “great circles,” or arcs of circles that passed completely around the widest part of the ball.
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Chapter 6 The Patent Instrument 185 122 results (showing 5 best matches)
- Issues of definiteness are most likely to come up in patent litigation, rather than during the prosecution of patent applications at the USPTO. That is because during prosecution, if the examiner finds the claim ambiguous or indefinite, the applicant will be given an opportunity to amend the claim. During litigation, however, the patentee is stuck with the claims as granted, and if a court finds them indefinite the relevant claims will be invalid.
- failure to comply with the best mode requirement served as a potential basis for invalidating an issued patent. The 2011 legislation altered this rule, removing non-compliance with the best mode requirement as a basis for cancelling, invalidating, or holding a patent unenforceable in any action involving the validity or infringement of a patent. September 16, 2011, and applies to any litigation filed on that date or thereafter.
- Patents may be distinguished from other intellectual property rights in that they can only arise after a formal application process and governmental review. There is no such thing as a common law patent, or a patent that arises instantaneously by operation of law. Individuals must present written applications to the USPTO in order to secure proprietary interests in their inventions. These applications may ultimately mature into issued patent instruments, the documents that form the basis of individual patent rights. The Patent Code itemizes in detail the contents of each patent instrument in § 112. The first two of these paragraphs are of central significance to the patent project.
- Regrettably, no precise equation allows us to determine whether a particular patent claim suffers from “undue breadth” in view of the disclosure of the patent’s specification. Most patents include claims that are broader than the specific working examples that are disclosed in the specification. Courts recognize that limiting the scope of patent protection to only the particular embodiments recited in the specification could render patent protection meaningless, as skillful competitors could design products that deviated slightly from the details of their construction. On the other hand, allowing inventors to obtain excessively broad, generic claims might provide rights out of proportion to the patent’s contribution and discourage future innovation. As informed by the easily applied rule, for assessing when a particular patent claim exceeds its appropriate scope.
- That case concerned Mahurkar’s two U.S. utility patents relating to double lumen catheters. Vas-Cath and its licensee sought a declaratory judgment that Mahurkar’s patents were invalid under pre-AIA § 102(b). The declaratory judgment plaintiffs pointed to a Canadian design patent that Mahurkar had obtained on August 9, 1982. The plaintiffs observed that Mahurkar had not filed his U.S. utility patent applications until October 1, 1984, more than a year after the issue date of the Canadian patent, thereby triggering the “patented” bar of pre-AIA § 102(b).
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Chapter 8 Infringement 291 163 results (showing 5 best matches)
- While the federal government is, as we have seen, liable if it uses a patent technology without a license, if a state government or agency of a state engages in a patent-infringing act, the patentee’s ability to obtain relief is at the present time uncertain. This uncertainty is due to the Eleventh Amendment, which provides that a federal court is without power to entertain a suit by a private person against a state. However, Congress has stipulated that the federal courts possess exclusive jurisdiction over patent infringement litigation. Patent proprietors are therefore left with a dilemma: the only statutorily authorized forum is constitutionally unavailable, and the only constitutional forum is statutorily unavailable, at least for the assertion of a conventional patent infringement claim. As a result, the patentee’s only option would be a state court suit charging the ...with a taking, or asserting general unfair competition principles, in order to vindicate its patent...
- That said, the existence of a patent may cause competitors to avoid any activities that might be deemed infringement because patent litigation can be extraordinarily expensive and time consuming. As one nineteenth century jurist put it, “[t]he average business man undoubtedly dreads, and avoids, if he can, a lawsuit of any kind, but a suit for infringement of a patent is so far outside of the common man’s experience that he is terrorized by even a threat of such a suit.”
- Aware of this situation, Congress attempted to abrogate the Eleventh Amendment immunity enjoyed by state governments with respect to patent infringement suits. found that Congress had not properly abrogated state immunity to patent infringement litigation in the federal courts in keeping with the requirements of the Eleventh Amendment.
- In addition, the patents of others might also interfere with a patentee’s ability to practice his own patented invention. For example, suppose that Admiral Motors obtains a patent on an internal combustion engine for use in automobiles. Later, Betty Beta purchases an automobile marketed by Admiral that embodies the patented invention. Beta experiments with her new car and develops a dramatically improved fuel injector usable only in the patented Admiral Motors engine. Even if Beta patents her improved fuel injector, she cannot practice that technology without infringing Admiral’s basic patent. In this case, the Admiral patent is said to be a blocking, or dominant patent over Beta’s improvement or subservient patent. Unless one of the parties licenses the other, Beta must wait until Admiral Motors’ patent expires before practicing her own patented improvement invention.
- The patent system has not favored trade secret holders. As we have already seen, an inventor who makes a secret, commercial use of an invention for more than one year prior to filing a patent application at the USPTO forfeits his own right to a patent. This policy is principally based upon the desire to maintain the integrity of the patent term. The Patent Act grants patents a term of 20 years commencing from the date a patent application is filed. If the trade secret holder could make commercial use of an invention for many years before choosing to file a patent application, he could disrupt this regime by delaying the expiration date of his patent. It also acts as an incentive to file for the patent promptly and thus share the technology with others who may potentially improve upon it, thus further advancing the state of technology.
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Chapter 2 Patent Eligibility 23 124 results (showing 5 best matches)
- One other aspect of these recent cases on patent-eligibility is worthy of note. The Court in observed that patent-eligibility is a “threshold” issue. Perhaps taking this as a cue, some trial courts have opted to address patent-eligibility concerns early in a case, often relying solely on the pleadings. Infringement defendants certainly prefer this approach as it allows them to defeat the claim without having to endure lengthy litigation and an expensive trial. Some commentators have, however, criticized this approach, arguing that determining whether an invention is patent-eligible necessarily requires interpretation of the claims.
- A utility patent is the general sort of patent for innovative products and processes, and is by far the most frequently sought type of patent. As a result, when commentators refer to a patent, they are ordinarily referring to the legal instrument more technically known as a utility patent. Two more specialized kinds of patents, pertaining to designs and plants, are discussed in Chapter 13 of this text.
- In this example, Avon’s product patent is termed the “dominant” patent, while Gardner’s method of use patent is termed a “subservient” patent. In these circumstances, Gardner cannot practice her process without employing SOFT-SKIN, which is patented by Avon. Nor could Avon employ SOFT-SKIN as a lawn fertilizer without infringing Gardner’s method of use patent. In these circumstances, the holders of the dominant and subservient patents often possess incentives to cross-license one another.
- reflects this latter position (and thus effectively calls into question the 50,000 patents mentioned in the previous paragraph). The litigation commenced when the Association for Molecular Pathology and 19 other plaintiffs, including individual physicians, patients, and researchers, filed a lawsuit against the USPTO, Myriad Genetics, Inc., and the Directors of the University of Utah Research Foundation. The plaintiffs challenged several patents owned by Myriad that claimed isolated human genes known as BRCA1 and BRCA2. breast and ovarian cancer associated with the BRCA1 and BRCA2 genes. The plaintiffs asserted that Myriad’s gene patent claims were invalid because, in their view, human genes are naturally occurring products that do not constitute patentable subject matter.
- Although inventors are allowed to obtain process patents on newly discovered uses, the patent law limits the scope of protection to the particular method claimed. As with other sorts of patents, patented methods are subject to the proprietary interests of others. As a result, owners of patents on new uses may have to account for earlier patents. Suppose, for example, that Aaron Avon owns a patent claiming (1) a particular chemical compound and (2) a method of using that compound as a skin softening agent. Avon sells the patented chemical under the trademark SOFT-SKIN. An Avon customer, Gina Gardner, purchases a bottle of SOFT-SKIN and accidentally drops some of it in her garden. Gardner unexpectedly discovers that the Avon chemical makes a wonderful fertilizer for rose bushes. Gardner files a patent application claiming the use of SOFT-SKIN as a plant fertilizer.
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Chapter 15 State Law Issues: Trade Secrets and Federal Preemption 533 56 results (showing 5 best matches)
- A key difference between patent and trade secret litigation involves the identification of the plaintiff’s intellectual property. In a patent lawsuit, at least one of the parties arrives at the courthouse door with a patent instrument that specifically claims the protected invention. In the trade secret context, however, the precise information considered to be a trade secret is often not specified prior to litigation. The burden therefore falls upon the plaintiff to describe the trade secrets it claims were misappropriated with reasonable particularity. The plaintiff typically does not do so in its complaint—after all, that exercise might publicly disclose the trade secret, and
- A number of circumstances may negate secrecy. Knowledge that may be readily gained from an inspection of a commercially available product is not secret. Similarly, information that may be found in publicly available journals, texts, or other published materials may not be kept as a trade secret. Issuance of a U.S. patent or publication of a pending patent application also destroys the secrecy of any information claimed within such a document. This result holds even if the published application does not mature into a granted patent, or if the patent is later held invalid.
- Trade secrets and patents coexist in what can be described as an uneasy relationship. A principal purpose of the patent law is the dissemination of knowledge. This goal is realized through the publication of patent instruments that fully disclose the patented invention such that skilled artisans could practice it without undue experimentation.
- This tension results in a variety of patent law doctrines that deliberately disadvantage trade secret holders. One patent law principle that deleteriously impacts trade secret holders is that a later, independent inventor may patent the subject matter of an earlier inventor’s trade secret. For example, let us assume that a trade secret holder called TraSeeCo develops a new method for purifying insulin in early 2019. TraSeeCo immediately begins to practice the method in its own, restricted-access manufacturing facility. Although TraSeeCo sells purified insulin, it does not disclose how the insulin is purified. Further assume that another firm, PatCorp, develops the same method in mid-2020 through its own research, without knowledge of TraSeeCo’s earlier activities. PatCorp then immediately files a patent application. TraSeeCo’s activities will not constitute prior art preventing the issuance of a patent to PatCorp, because its activities do not, by definition, constitute prior art...
- The costs associated with acquiring and maintaining patents are another consideration. A U.S. patent provides rights only within the United States, obtaining a patent in each jurisdiction in which he plans to do business.
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Table of Cases 569 3 results
Chapter 3 Utility 59 33 results (showing 5 best matches)
- Taking this rationale one step further, one might argue that the utility requirement is itself useless. If a patent issues on a wholly inoperative invention, then the invention can obviously never be used, and as a result the patent will never be infringed. This view is correct, however, only to the extent that a patented invention lacks utility throughout the entire term of the patent. If the USPTO granted a patent on an invention with no known function, then the existence of the patent might discourage others from learning how to put that invention to use. Anyone who actually discovered a use for the invention would be subject to the patent, possibly delaying the introduction of a beneficial product to the marketplace.
- Newcomers to the patent system may be surprised to learn that a patented invention need not be superior to the state of the art. Many of us have seen advertisements touting the fact that a particular product is subject to a patent. Some lay persons may believe that the patent grant conveys the fact that the product is better than others available on the market. Informed individuals know that the USPTO does not judge the degree of utility of a patented invention when assessing utility under § 101.
- As explained by Justice Story, any invention that minimally works fulfills the utility requirement. In particular, the utility requirement does not mandate that the invention be superior to existing products and processes in order to qualify for a patent. Justice Story rejected this proposed standard of “general utility” nearly two centuries ago, and the patent law has retained this result ever since. Put succinctly, then, the patent law wants inventors to come up with something different, not necessarily better.
- The utility requirement therefore plays a quite limited role in most technical fields. The utility requirement merely sifts out utterly incredible inventions from the domain of patentability. As one might expect, the utility requirement is not often used as a defense in patent infringement proceedings. The fact that the defendant is accused of using the patented invention typically suggests that the invention is capable of at least one functional use.
- A relationship exists between the utility requirement of § 101 and the so-called “enablement” requirement of § 112. As discussed in Chapter 6 of this book, the first paragraph of § 112 of the Patent Act requires that patent instruments contain a full and clear description of the patented invention. This description must be sufficiently complete as to enable others to use the patented invention. Plainly, one cannot describe how to use an invention if that invention is useless. As a result, arguments about the lack of usefulness of the invention are often made both in the context of the utility requirement of § 101 and the enablement requirement of § 112.
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- Moreover, since the first edition, the legal landscape has changed profoundly. With the adoption of the America Invents Act, Congress substantially rewrote the rules governing many aspects of patent practice, and created wholly new administrative proceedings that have become central to the patent project. The Supreme Court has shown a renewed interest in patent law as well, deciding several cases a year and in the process remaking the law concerning patent-eligible subject matter, nonobviousness, infringement, and a host of other topics.
- When we prepared the original version of this text we did so because we recognized that patent law had migrated from the edges of American law and public policy to a much more central position. In the years since that first edition, that migration has significantly accelerated, and our prediction in the preface to that edition that “patent law is only likely to grow in importance in the years to come” has proven, if anything, to be an understatement. The relevance and consequences of innovation policy are now recognized across the political spectrum and major patent controversies appear in the media regularly. Academic interest in the field has grown proportionately, and the number of students interested in the field has never been greater.
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Summary of Contents 13 results (showing 5 best matches)
Table of Contents 19 results (showing 5 best matches)
- Publication Date: April 8th, 2019
- ISBN: 9780314276681
- Subject: Intellectual Property
- Series: Concise Hornbook Series
- Type: Hornbook Treatises
- Description: The new edition of this leading text on patent law is an indispensable tool for both students and practitioners. The authoritative exposition of the law includes thoughtful analysis of the intricacies of the America Invents Act, in-depth discussion of nearly twenty recent Supreme Court decisions on patent law, and thorough treatment of all the leading Federal Circuit precedents. The volume also contains detailed materials on international issues, trade secret law, and specialized topics including plant patents, design patents and the Hatch-Waxman Act. The accessible prose, numerous illustrative examples, and humorous asides make the book user-friendly even for those who lack previous exposure to the field.