Principles of Patent Law
Authors:
Schechter, Roger E. / Thomas, John R.
Edition:
3rd
Copyright Date:
2019
22 chapters
have results for patent
Chapter 1 Introduction to the Law of Patents 1 80 results (showing 5 best matches)
- 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.
- The requirements that an invention be new and nonobvious to qualify for patent protection ensure that the patent system does not withdraw subject matter from the public domain. The limited duration of patent rights—ordinarily 20 years from the date the patent application was filed—also contributes to the public domain. Once a patent has expired, others may practice the patented invention without regard to that extinguished proprietary interest. As a result, the patent system seeks both to preserve and to expand the public domain.
- The Patent Act is also thought to stimulate technological advancement by inducing individuals to “invent around” patented technology. Issued patent instruments may point the way for others to develop improvements, exploit new markets or discover new applications for the patented technology. Moreover, the patent system may encourage patentees to exploit their proprietary technologies during the term of the patent. The protection provided by a patent’s proprietary rights increases the likelihood a firm will continue to refine, produce, and market the patented technology. Finally, the patent law has been identified as a facilitator of markets. Not every inventor will have the resources to bring the invention to market. Inventors may thus wish to license others to exploit the invention in return for a royalty. Absent patent rights, however, an inventor may have scant tangible assets to sell or license, and even less ability to police the conduct of a contracting party. By reducing a...
- No matter what your role in the U.S. legal system, if you are interested in the patent law, you have come at a good time. By any conceivable measure, patents are more significant by an order of magnitude than a generation ago. More patents are sought and enforced than ever before; the attention paid to patents in business transactions and corporate boardrooms has dramatically increased; and the commercial and social importance of patent licenses, judgments, and settlements is at an all-time high. Not only is patent law more important than ever, it is also of increasing interest to both legal professionals and the public at large. The brisk pace of technological change has channeled a steady stream of intriguing legal issues towards the patent system. Jurists, academics, and practitioners alike have in turn championed an intellectual revival of this venerable discipline. In sum, there has never been a better time to study patents. We hope that this introductory chapter, which...
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Chapter 12 Patent Assignments and Licenses 435 91 results (showing 5 best matches)
- 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.
- In contrast to an assignment, a license does not transfer ownership of a patent. A license instead acts in the nature of a permission. Patents allow their owners to exclude others from practicing the patented invention. By granting a license, the patent proprietor agrees not to exercise that right against the licensee, usually in exchange for the payment of royalties. Consequently, a license provides an affirmative defense in a suit for patent infringement.
- Licenses need not be memorialized in writing, although sound business practice suggests that they should be. Another difference between assignments and licenses concerns standing to enforce the patent right. As noted previously, the Patent Act allows only “a patentee” to bring a suit for patent infringement. The courts have interpreted this language as providing standing to sue for patent infringement to assignees. Under this reasoning, an assignee of “all substantial rights” to the patent steps into the shoes of the original owner and becomes “the patentee.” As a result, an assignee who is the sole owner of a patent may enforce the patent right on her own. She need not obtain the cooperation or permission of anyone else and may bring the lawsuit in her own name.
- Patent licenses often call for the periodic payment of royalties during the life of the patent. This arrangement is perfectly acceptable. If, however, the licensee promises to make payments following the expiration of the patent, then troubles arise. In its 1964 the Supreme Court held that a patent license that provides for royalty payments beyond the life of the patent is unlawful . According to the Court, by obtaining a promise of continuing royalty payments beyond the patent’s expiration date, the licensor has attempted to extend the term of the patent beyond the statutorily prescribed term. Justice Douglas reasoned that this effort amounts to an impermissible enlargement of the scope of the patent and therefore constitutes “misuse”—a concept that we will discuss in greater detail in the next subsection. As a result, any patent license calling for the payment of post-expiration royalties is unenforceable.
- Judge Posner’s opinion attacked the foundations of patent misuse doctrine. He reasoned that misuse does not extend the patent beyond the scope of the claims because, as a matter of economics, patentees are only able to charge what others will pay for use of the patent. That charge can take the form of license restrictions, such as grant-back clauses, differential royalties, measurement of the royalty by the sale of a non-patented product, or simply a higher monetary price. As he put it, “The patentee who insists on limiting the freedom of his purchaser or licensee—whether to price, to use complementary inputs of the purchaser’s choice, or to make competing items—will have to compensate the purchaser for the restriction by charging a lower price for the use of the patent. If, for example, the patent owner requires the licensee to agree to continue paying royalties after the patent expires, he will not be able to get him to agree to pay as big a royalty before the patent expires.”
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Chapter 2 Patent Eligibility 23 123 results (showing 5 best matches)
- 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.
- 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.
- Section 101 of the Patent Act ( ) defines the subject matter that may be patented. According to the statute, a person who “invents or discovers any new and useful process, machine, manufacture, or any composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” An invention that falls within one of the four statutory categories—processes, machines, manufactures, and compositions of matter—may be eligible for a so-called “utility patent.” Patent applicants need not specify explicitly
- a divided panel of the Federal Circuit reversed a decision that plaintiff’s claims for payroll software were not patent eligible. The appellate court reasoned that the allegations in the complaint raised factual questions that required resolution before the question of patent-eligibility could be determined. In a concurring opinion, Judge Reyna worried that the decision could require trial courts to deal with “an inexhaustible array of extrinsic evidence, such as prior art, publications, other patents, and expert opinion” in assessing patent eligibility. He would have preferred to have the eligibility determination turn solely on an assessment of the language of the patent claims. The decision may signal a new turn in the patent-eligibility saga, where the threshold question becomes itself the occasion for a mini-trial on the contours of the invention.
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Chapter 5 Nonobviousness 151 80 results (showing 5 best matches)
- 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.
- Economic studies have advanced a more theoretical justification for demanding nonobviousness as a condition of patentability. Legal economists have urged that an optimal patent system would only grant patents to inventions that have been induced by the patent system itself. If ordinary market forces provided sufficient incentives to invent and disclose new technologies, then the award of a patent would be unnecessary to promote innovation. In such cases, the public should not be made to suffer the inconvenience and cost of a patent. Although the patent system does not attempt to discern the motivation of individual inventors, it does employ the proxy of nonobviousness. Under this view, the nonobviousness requirement encourages individuals to pursue projects that, because they require expansion of the state of the art, are of uncertain success.
- The patent in concerned a cashier’s counter for use in grocery and other stores. The two lower courts had upheld the patent, but the Court granted certiorari and struck the patent down. According to Justice Jackson himself, the disputed invention claimed a combination of known elements and, as such, must be judged under the so-called “synergy” test. “The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable.” This demand for “unusual or surprising consequences” seemed to call for the downfall of nearly every patent claim, for nearly every invention may be cast as a combination of old elements. The patent community sought relief from this unfavorable precedent, ultimately prevailing with the enactment of the nonobviousness standard in § 103 in the 1952 Patent Act.
- Graham lost. Both lower courts to consider the issue held the ’798 patent invalid, and the Supreme Court ultimately affirmed. Justice Clark concluded that the ’798 patent would have been obvious due to the teachings of two references: Graham’s own earlier ’811 patent and a reference not before the Patent Office examiner, a device marketed by the Glencoe Manufacturing Company. The Glencoe device included a stirrup, and the Court judged that any skilled artisan would have immediately sought to reverse the shank and the plate in order to improve the flex. As a result, the Court concluded that the invention of the ’798 patent would have been obvious under § 103.
- The trial court held the Scroggin patent not invalid and infringed, and the Eighth Circuit affirmed. The Supreme Court reversed, finding that the Scroggin patent would have been obvious in light of three prior art patents to Lohse, Mellon, and Livingstone, respectively. The Lohse and Mellon patents both taught the use of shipper-sprayers similar to that of Scroggin. The Livingstone patent, which was not before the examiner, concerned a seal designed to cover and protect pouring spots that functioned without the use of a gasket or washer. The Court rejected the argument that the Livingstone patent should be disregarding as nonanalogous art: “Closure devices in such a closely related art as pouring spouts for liquid containers are at the very least pertinent references.”
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Chapter 7 Patent Prosecution 229 228 results (showing 5 best matches)
- For patents resulting from applications filed after June 8, 1995, the patent term is ordinarily 20 years from the date the patent application was filed. For patents issued prior to June 8, 1995, as well as for patents resulting from applications pending at the USPTO as of that date, the patent endures for the greater of 20 years from filing or 17 years from grant.
- 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.
- Courts have identified two sorts of double patenting. The first kind, which occurs when both patents have claims of identical scope, is known as “same-invention double patenting.” If the claims of the later patent could not be literally infringed without literally infringing the claims of the earlier patent, then a court will strike down the later patent for double patenting. Courts have sometimes based the prohibition against same invention double patenting on § 101, which allows an applicant to “obtain patent” on an invention. Two patents on the same invention are thus more than the statutory language contemplates. As a result, this doctrine is sometimes referred to as statutory double patenting.
- When two patents do not claim the identical invention, but instead obvious variations of each other, the later patent will also be invalidated due to so-called “obviousness-type double patenting.” In contrast to same invention double patenting, judges may employ prior art references in combination with the claims of the earlier patent to determine whether the later patent claims an invention that would have been obvious to those of skill in the art. Because no provision of the Patent Act concerns obviousness-style double patenting, courts sometimes refer to this doctrine as non-statutory double patenting.
- Sometimes events that occur during prosecution at the USPTO can cause the double patenting doctrine to work a hardship against patent owners. In some cases, a USPTO restriction requirement can result in one patent application leading to multiple issued patents, which may be on suspect ground with regard to double patenting. In other circumstances involving different patents on a genus and species, the order of patent issuance may also lead to some unfortunate double patenting consequences. Courts have responded to these scenarios by developing ameliorating doctrines to address these particular circumstances.
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Chapter 13 Specialized Patent Legislation 461 131 results (showing 5 best matches)
- 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
- Congress has established two sorts of specialized patent rights—for designs and plants respectively. In order to distinguish design and plant patents from the usual sort of patents—granted to processes, machines, manufactures, and compositions of matter—the latter (with which we have been exclusively concerned in earlier chapters) are often termed “utility” patents. That is because § 101 of the Patent Act requires these sorts of inventions to be useful. Another plant-based intellectual property right, the plant variety protection certificate, is conveniently considered alongside plant patents.
- In addition to granting so-called “utility patents” directed towards machines, manufactures, compositions of matter and processes, the Patent Act of 1952 also allows for “design patents.” An inventor may obtain a design patent by filing an application with the USPTO directed towards a “new, original and ornamental design for an article of manufacture.” Most design patent applications consist primarily of drawings that depict the shape or surface decoration of a particular product. They may concern any number of products, but often concern consumer goods. Design patents have issued on such subject matter as containers, electronics products, furniture, jewelry, motor vehicles, textile designs, toys, and countless other sorts of goods. Unlike utility patents, a design patent may have only one claim.
- As they do with respect to utility patents, courts may engage in a process of “claim construction” with respect to design patents. Because the claims of design patents consist of visual images of the protected design, this sort of claim construction consists of putting into words the visual appearance of the designs shown in the patent’s drawings. This textual description is then compared to the accused product under the ordinary observer standard in order to determine whether the design patent was infringed or not.
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Chapter 4 Novelty 71 236 results (showing 5 best matches)
- As a result, the date of effectiveness for foreign patents as prior art is the first date they are publicly disclosed. Although different patent systems overseas include varying provisions, generally speaking the first date foreign patent offices publish a patent document is either (1) the date on which the foreign patent actually issues, or (2) an earlier date, mandated by foreign patent statutes, on which pending patent applications are published (in most countries this date is approximately 18 months after the application is filed).
- Under the AIA, priority of invention is established by the earliest effective filing date of a patent application disclosing the claimed invention. Stated differently, the inventor who first filed an application at the patent office is presumptively entitled to the patent. Whether or not the first applicant was actually the first individual to complete the invention in the field is irrelevant. The AIA priority system thus follows a “first-to-file” principle and sets up a race to the Patent Office to determine who will secure the patent.
- Suppose, for example, that the manufacturer of an unpatented chemical compound learns that a competitor has obtained a patent on that exact compound. If the manufacturer’s earlier activities serve as prior art against the patent, then the patent is invalid because it has been anticipated. On the other hand, if the manufacturer’s activities do not count as prior art, its continued production of the compound will infringe the patent.
- Issues over the term “patented” ordinarily arise with respect to patents granted abroad. Global legal regimes yield an exotic array of intellectual property rights that can differ significantly from familiar domestic patents. As the Court of Customs and Patent Appeals once declared, “Not every foreign document labelled a “patent” is a patent within the meaning of Conversely some things not labelled a patent abroad are equivalent to what is considered a patent under U.S. law. The courts, therefore, have been left to determine which of these rights constitutes a “patent” within the terms of
- Post-AIA § 102(a)(2) provides a complex rule that governs the prior art status of published patent applications and issued patents. Under post-AIA § 102(a)(2), a published U.S. patent application that discloses the invention constitutes prior art as of its filing date. Post-AIA § 102(e)(2) works similarly: an issued U.S. patent that discloses the invention constitutes prior art as of its filing date.
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Chapter 8 Infringement 291 162 results (showing 5 best matches)
- 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.
- Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
- Section 271(a) explains that a patent confers the right to exclude others from making, using, selling, offering for sale, or importing into the United States the patented invention. A better way to put the matter might be that the patent provides the right to to exclude. Like most rights, patents do not enforce themselves. Private efforts such as cease-and-demand letters or licensing requests, and ultimately a charge of patent infringement in federal court, might prove necessary to effectuate these rights.
- The Supreme Court had no appetite to permit a patent suit under these circumstances. Chief Justice Roberts explained that patent rights are exhausted when a patented product has been sold, whether or not they were sold subject to a “single use” or other contractual restriction. The patent proprietor may have a suit for breach of contract against the purchaser, Chief Justice Roberts explained. But in his view, longstanding Supreme Court precedent rendered a suit for patent infringement inappropriate in such circumstances. In his view, “a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale,” and patent exhaustion was “uniform and automatic,” applying
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Chapter 10 Remedies for Patent Infringement 379 113 results (showing 5 best matches)
- The Patent Act encourages patentees who make or sell embodiments of their patented invention to give notice to the public of their patent rights. Section 287(a) provides that patentees and their licensees should fix the word “patent” or the abbreviation “pat.”, along with the number of the patent, on patented articles. Patent proprietors may now place the word “patent” or abbreviation “pat.” on their products, along with a freely accessible Internet address that lists particular patents, and be considered to have marked their products within the meaning of the patent laws.
- Although provisional rights extend from the time the USPTO publishes the application until the date the agency formally grants the patent, they may be invoked only when the patent issues. In other words, the inventor may not bring a patent infringement suit against an infringer until the date the patent actually issues. If the USPTO decides not to grant the patent, then the patent applicant obtains no rights at all. Also, under no circumstances do inventors gain patent rights against individuals who use their inventions prior to the date of pre-grant publication.
- as putting patent trolls in their place, while at the same time preserving permanent injunctions for brand-name pharmaceutical firms and other enterprises that actually market their patented products. In their view, wisely recognizes that patent infringement is a strict liability offense that occurs whether or not the infringer knew of the patent prior to being sued. The pre- “automatic injunction” rule essentially presumed that technology users were able to discover relevant patents in advance and either design around them or negotiate patent licenses. This account may not hold true today given the number and fragmented ownership of potentially relevant patents. As a result, such
- case explains that a patent proprietor must demonstrate the first two factors—likelihood of success on the merits and irreparable harm—in order to be entitled to preliminary injunction. However, if a patent proprietor makes out a clear showing of patent validity and infringement, he is entitled to presumption of irreparable harm. In this class of cases, important considerations include whether the patent owner delayed in bringing suit, is losing market share due to the purported infringement, and whether the owner previously licensed the asserted patent to other competitors.
- Under the Patent Act, a qualifying owner of a utility patent recovers its own lost profits, rather than the profits that the infringer made. An award of damages for infringement of a utility patent serves to compensate the patentee, rather than disgorge profits earned by the infringer. However, in what can only be described as an unusual exception to this rule, the Patent Act does allow proprietors of design patents to opt for an “additional remedy” consisting of the infringer’s profits.
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Chapter 14 Patent Law in International Perspective 499 128 results (showing 5 best matches)
- 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.
- 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.
- when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.
- The European Patent Convention (EPC) is the most prominent example of a regional patent harmonization agreement. The EPC established a European Patent Office based principally in Munich, Germany and the Hague, the Netherlands. An inventor may file a single patent application at the European Patent Office, which, if accepted, matures into a number of individual national patents in the European states the applicant has designated.
- Significantly, as of 2018, the EPC does not create a unitary European patent. A European Patent Office application amounts to a group of national patent applications that are processed together but then are given individual legal effect within the appropriate jurisdictions. Once issued by the European Patent Office, these patents enjoy independent legal lives, and must be enforced and maintained separately.
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Chapter 6 The Patent Instrument 185 121 results (showing 5 best matches)
- 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).
- Mahurkar in turn argued that his utility applications were entitled to a filing date on March 8, 1982, which happened to be well before the date the Canadian design patent issued. It seems that on that date in 1982 Mahurkar had filed an application for a U.S. design patent that included the same drawings that Mahurkar later included in his utility patent applications. Mahurkar contended that because earlier design applications provided adequate support for his later utility patent applications, the 1982 filing date applied to both applications. The issue before the courts was whether the 1982 design patent application demonstrated that Mahurkar was in possession of the subject matter claimed within the later utility patent applications.
- Claims drafters must also bear in mind the legal standards for properly drafted claims. The most significant statutory provision governing claiming is § 112(b). That provision calls for the patent specification to close with “one or more claims,” and in practice most U.S. patents contain multiple claims. Under this regime each claim presents a separate statement of the patented invention. It is quite possible for some claims of a patent to be invalid on prior art grounds, while others are valid. Similarly, a competitor may infringe some claims of a patent but not others, depending upon the precise formulation of each claim. Individual claims effectively afford distinct proprietary interests each of which must be judged on its own merits.
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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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Chapter 11 Patent Litigation 411 75 results (showing 5 best matches)
- As we have seen, some cases appealed to the Federal Circuit involve both patent issues and other matters over which the court lacks exclusive jurisdiction. For example, a licensing dispute could involve both patent and contract law issues. In reviewing district court judgments in patent cases, the Federal Circuit applies its own law with respect to patent law issues, but with respect to nonpatent issues the Federal Circuit generally applies the law of the circuit in which the district court sits. The Federal Circuit has reasoned that requiring trial courts to apply different standards to patent and non-patent cases would be confusing and inconvenient. However, for fields like the patent law, in which the Federal Circuit enjoys exclusive jurisdiction, the application of Federal Circuit law contributes to uniformity and certainty.
- 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.
- , once the courts conclusively rule that a patent is invalid, the patent proprietor effectively owns a nullity. Unless the patentee can show that it lacked a “full and fair” opportunity to litigate—an argument that, in the years since , has proved spectacularly unlikely to succeed—subsequent infringement suits on that patent will be summarily dismissed. A victorious patent challenger thus effectively acts as a “private attorney general” who strikes down the patent for all the world.
- 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.
- Section 281 of the Patent Act provides that a “patentee shall have remedy by civil action for infringement of his patent.” Under the Patent Act, the term “patentee” is not limited to the person to whom the patent originally issued, but also includes “successors in title to In interpreting these provisions, the courts seek to ensure that plaintiffs assert their own rights, and not those of others. They also wish to shield defendants from the possibility of multiple infringement lawsuits based upon a single patent, brought sequentially by licensees, individual co-owners, and other entities that do not by themselves have a sufficient possessory interest in a patent.
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Chapter 9 Claim Interpretation and Equivalents 337 117 results (showing 5 best matches)
- The Patent Act consistently bases the patentee’s exclusive rights upon the “patented invention.” Modern courts have judged this phrase to refer to the invention as recited in the claims. Interpretation of the text of the claims is thus a central issue of contemporary patent law. When construing claims, courts consider their express language along with the specification, drawings and prosecution history associated with the patent.
- The Court began its opinion by reviewing basic policies underlying the doctrine of equivalents. The Court observed that confining patent rights to cases of literal infringement would merely encourage competitors to make unimportant substitutions to the invention as claimed. Such a hollow grant of rights would discourage inventors from seeking patents and thwart a principal purpose of the patent system, the disclosure of new inventions. In sum, the “essence” of the doctrine of equivalents was to prevent “fraud on a patent.”
- has the merit of bringing some analytical rigor to the enduring maxim of the patent law that claims towards pioneering inventions are entitled to a broader range of equivalents than patents claiming a narrow improvement in a crowded art. This often-recited canon of claim construction recognizes that the prior art is unlikely to restrain the scope of equivalents on patents that claim revolutionary advances. However, where the patented invention presents a humbler advance, then the prior art may restrain the range of equivalency to those claims.
- case involved a recurring situation: sometimes the claims of a patent are not as broad as the technical disclosure contained in that patent’s written description. The patent at issue in that case, owned by Johnson & Johnston, concerned a printed circuit board. A printed circuit board is a thin plate on which computer chips or other electronic components are placed. The patent’s specification explained that the substrate of the circuit board could be manufactured of a number of materials, including aluminum, steel and nickel. However, the patent’s claims were limited to a substrate made of aluminum. Accused infringer R.E. Service manufactured printed circuit boards with a steel substrate.
- decision, patent applicants have been encouraged to draft claims with increasing care. Commentators have proposed that applicants draft a broad generic claim as well as more specific claims to each embodiment that can be envisioned. The Federal Circuit itself offered suggestions for parties who had not anticipated the holding of the case. According to the court, if subject matter had been disclosed but not claimed, affected individuals could: (1) in cases where a patent had already issued, pursue a broadening reissue procedure; or (2) if the patent was still in prosecution at the USPTO, file a continuing application or otherwise amend the claims. Because the Patent Act prohibits the commencement of broadening reissue procedures more than two years after a patent has issued, however, neither of these suggestions is of much use to owners of patents that issued more than two years prior to the ...upon the doctrine of equivalents—one that will require patent applicants to craft...
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Chapter 15 State Law Issues: Trade Secrets and Federal Preemption 533 50 results (showing 5 best matches)
- 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.
- , the Court refused to enforce an agreement to pay royalties on a patented invention beyond the term of the patent. The Court viewed the agreement as effectively extending the statutory patent term. Technically, was a patent misuse case, but the Court’s opinion also suggested concerns over federal preemption. the Court held that licensees were free to challenge licensed patents even if they had agreed to refrain from doing so. According to the Court, the doctrine of “licensee estoppel” conflicted with the federal policy of invalidating improvidently granted patents. more squarely relied upon a preemption analysis, concluding that state contract laws that interfered with a federal patent policy were preempted.
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Preface to the Third Edition v 2 results
- 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 Cases 569 3 results
Table of Contents 19 results (showing 5 best matches)
Index 579 45 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.
