Principles of Patent Law
Authors:
Schechter, Roger E. / Thomas, John R.
Edition:
3rd
Copyright Date:
2019
25 chapters
have results for principles of patent law
Chapter 11 Patent Litigation 411 108 results (showing 5 best matches)
- 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.
- 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.
- Some difficult jurisdictional questions arise when the plaintiff’s complaint does not state a cause of action in patent law, but the defendant’s answer does. The defendant’s answer may include counterclaims that include a cause of action under the patent law. For example, suppose that the plaintiff claims an antitrust violation in his complaint, while the defendant in turn asserts a claim of patent infringement against the plaintiff in her answer. To determine which court has appellate jurisdiction in this case—the Federal Circuit, or the relevant regional circuit—we must resolve whether the case “arises under” the patent law.
- For the majority of cases, determining whether the cause of action “arises under” the patent laws is straightforward. A garden variety charge of patent infringement plainly arises under the Patent Act and must proceed in the federal district courts rather than in state court. Other sorts of cases may raise more difficult questions, however. To decide whether applies, the courts follow the “well-pleaded complaint rule.” Courts determine whether the plaintiff’s complaint establishes that either (1) the federal patent law creates the cause of action, or (2) that the plaintiff’s right to relief necessarily depends upon the resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the plaintiff’s claims.
- Patent litigation is generally subject to the same standards that apply to all civil suits in federal courts. Such matters as discovery, exhibits, juries, motions, pleadings, presumptions, standards of proof, and witnesses are governed by broadly applicable legal principles found in sources such as the Federal Rules of Civil Procedure and the Federal Rules of Evidence. Although a detailed review of their application to patent cases would be appropriate for an advanced text on patent litigation, coverage of these materials exceeds the purposes of the overview treatment provided by this volume.
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Chapter 2 Patent Eligibility 23 175 results (showing 5 best matches)
- Long before Watson and Crick discovered the double-helix structure of DNA, the courts had held that laws and products of nature were not patentable. Laws of nature, including scientific principles, were treated much the same as abstract ideas. As a result, Georg Ohm could not patent V (voltage) = L (current) × R (resistance), nor could Albert Einstein patent the special theory of relativity. But a practical application of an abstract concept, mathematical algorithm or scientific principle could be patented (assuming, as we have throughout most of this chapter, that it was also novel and non-obvious). An inventor could not patent the broad optical principles that allow the generation of lasers, for example. However, if an inventor discovered a way to generate a laser; or to use a laser to align automobile wheels, generate a hologram, or “weld” detached retinas back into place without making an incision, then these inventions would be eligible for patenting within the meaning of
- The broad language of has been deemed to allow an expansive range of patentable subject matter. However, the courts have long held that several implicit exceptions exist to the four categories of patentable subject matter set out in . In particular, laws of nature, natural phenomena, and abstract ideas have been held to be unpatentable. Material of this sort constitutes the basic raw material for future technological innovation. Allowing one firm exclusive rights to a law of nature or abstract idea would pre-empt such a large field that it would hinder, rather than promote, the progress of the useful arts. As the Supreme Court has explained, leaving abstract ideas and principles of nature ineligible for patent protection reflects the “concern that patent law not inhibit further discovery by improperly tying up the future use of ‘these building blocks of human ingenuity.’ ”
- Applying these principles to the case at hand, the Court recognized that the claims in part recited “laws of nature,” in particular the relationships between the concentration of thiopurine metabolites and the likelihood that a dosage of a thiopurine drug will prove ineffective or harmful. However, the claims included steps in addition to the law of nature—in particular, they called for “administering” the thiopurine drug and “determining” the level of the relevant metabolites, “wherein” the drug dosage should be adjusted. According to Justice Breyer, the question before the Court was whether the claims amounted merely to the natural laws, or whether they added enough to the statement of the correlations to qualify as patent-eligible processes that applied natural laws.
- Consider the idea at the core of the claimed invention in —namely that you can minimize the risk of getting stiffed in a business transaction through the use of an intermediary. This abstract idea does not become patent-eligible material just because you write it up in a short pamphlet, nor is the pamphlet itself patent eligible. Patent eligibility turns on scrutiny of the material recorded, not on the fact of recordation. This rule also performs a channeling function, diverting works of authorship from the patent law to the copyright law. A copyright on the pamphlet would not, however, prevent others from practicing the idea, because copyright law only protects the form of expression and not the underlying concept.
- Prior to the decision, relying on the view that isolated and purified genomic DNA satisfied this exception to the “product of nature” doctrine, the USPTO issued over 50,000 patents relating at least in part to DNA. However, some experts believed that the decision to allow all these patents on human genes misconstrued the “product of nature” principle, and its “purified or isolated” exception. In their view, the fact that scientists have isolated a gene was a “technicality” that should not allow genes to be patented.
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Chapter 7 Patent Prosecution 229 293 results (showing 5 best matches)
- However, suppose that the USPTO allows Application B to issue as a granted patent first, even though Stark filed it second. Many reasons might explain Patent B’s shorter prosecution time, including the varying workloads of different USPTO examiners and the fact that Application B claimed a narrow species to which little prior art applied, as compared with the more expansive genus of Application A. In that case, Patent A could be invalid for double patenting. The reason is that, as a general principle of patent law, the disclosure of even a single species of a genus invalidates later claims to that genus. In this case, the species claims of Patent B would be judged to anticipate fully the genus claims of Patent A.
- The courts long ago sensed that USPTO processing times should not dictate whether patents are subject to the double patenting doctrine or not. In response they developed a doctrine that possesses one of the most confusing names in all of patent law, the “two-way double patenting doctrine.” Under a two-way analysis, double patenting will not apply unless the claims of each patent would have been obvious in view of the claims of the other patent.
- As a result, the courts have been left to develop the law of double patenting on their own. They did so fairly early in the development of the law. As long ago as 1891 the Supreme Court noted that if the claims of a second patent were identical to those of a previous patent issued to the same party, “or only a colorable variation from it, the second patent would be void, as a patentee cannot take out two patents for the same invention.”
- 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 ...of...
- At first blush, this scenario may not seem to pose much of an issue with respect to double patenting. If the USPTO concluded that the original application claimed two distinct inventions, for example, then there should be little chance that the two resulting patents would raise issues of double patenting. As with other determinations such as nonobviousness and enablement, however, USPTO decisions in this context may be contested by third parties. Without a protective principle at the ready, it would be possible for an applicant to comply with a USPTO restriction requirement, only to be accused of double patenting because two patents issued on the same invention!
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Chapter 1 Introduction to the Law of Patents 1 119 results (showing 5 best matches)
- This policy manifests itself in several ways in the patent law. The most notable example concerns the concept of “priority of invention.” Sometimes multiple individuals or enterprises file a patent application claiming the same invention at about the same time. As only one patent may issue in such cases, a rule is needed to determine who is entitled to the patent. As we write these words, the United States is in a period of transition with respect to the priority principle.
- 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.
- The patent system insists that only one patent issue per invention. This principle makes good sense as a policy matter. Offering the reward of a patent to an individual who merely discloses an invention already known to the public provides no apparent benefit, but imposes the cost of a proprietary interest in that invention that may span two decades.
- Since the first Congress enacted the Patent Act of 1790, the patent law has been a wholly federal, statutory subject. Today the patent law may be found in Title 35 of the United States Code. The Patent Act allows inventors to obtain patents on processes, machines, manufactures and compositions of matter that are useful, novel, and To be considered novel within the patent law, an invention must differ from existing references that disclose the state of the art, such as publications and other patents. The nonobviousness requirement is met if the invention is beyond the ordinary abilities of a skilled artisan knowledgeable in the appropriate field.
- The concept of exhaustion, however, provides an important exception to this rule. Once the patent owner has made an unqualified sale of a physical product to which its patent rights are attached, the patent owner cannot prohibit the subsequent resale of that particular product. Any patent rights in that specific physical product are said to have been “exhausted” by this initial sale. The exhaustion doctrine allows goods to move through the stream of commerce unhindered by multiple claims to proprietary interests. Sometimes this exhaustion principle is termed the “first sale” doctrine.
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Chapter 15 State Law Issues: Trade Secrets and Federal Preemption 533 165 results (showing 5 best matches)
- Most patent preemption cases have not turned on either field preemption or direct conflicts between state and federal law, however. Instead, they rest on the more difficult determination of whether the state law undermines or subverts the objectives of the patent law. A review of the leading cases reveals that courts have stressed different purposes of the patent law as they have faced varying state laws, sometimes leading to results that seem hard to reconcile with one another. Still, one can discern a few guiding principles based upon the major decisions of the Supreme Court in this area.
- 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...
- holding certain patent licensing practices unenforceable—effectively ruling that state contract principles would have to give way where they undermined the policies of federal patent law. We have discussed these cases earlier, but will retrace some steps here to stress the preemption aspects of the cases.
- 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. A law of trade secrets that encourages the withholding of patentable inventions and the hoarding of technological insights appears fundamentally at odds with this precept.
- The Supreme Court reversed in both cases. The Court concluded that the state causes of action for unfair competition would stand as an obstacle to achieving the full purposes of the federal Patent Act, and as a result they were preempted. According to the Court, the patent law not only defines those innovations that are patentable, but, by negative inference, also determines which innovations remain free for all to use. Because the devices in both cases had been held ineligible for patents, the Court felt that Congress meant for them to be freely copiable by competitors. “To allow a State by use of its law of unfair competition to prevent the copying of an article which represents too slight an advance to be patented would be to permit the State to block off from the public something which federal law has said belongs to the public.”
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Chapter 9 Claim Interpretation and Equivalents 337 184 results (showing 5 best matches)
- , the Supreme Court confirmed the principle that “[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the This principle is known as the All Limitations Rule. In applying it, a finding of infringement may arise only if each element of a claim is present in the accused device or process, either literally or equivalently. As the Federal Circuit recently put it, “If any claim limitation is absent from the accused product, there is no literal infringement as a matter of law.” The doctrine of equivalents is thus not oriented to the patented invention as a whole, but instead is more strictly employed with respect to each limitation of a patent claim.
- Applying this principle to the facts of the case, the Federal Circuit concluded that R.E. Service did not infringe the Johnson & Johnston patent under the doctrine of equivalents because a steel substrate, having been disclosed but not claimed in the patent instrument, could not thereafter be considered an equivalent of an aluminum substrate.
- 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.
- was the position that subject matter disclosed but not claimed in a patent application is, as a matter of law, dedicated to the public. Under this view, by failing to claim the full extent of the disclosed subject matter, an applicant deprives the USPTO of the opportunity to consider whether this subject matter is patentable. This is because only the precise claim language is evaluated against the prior art. Allowing an applicant to obtain narrow claims from the USPTO, and then to assert broader protection for unclaimed alternatives described in the specification, would defeat the fundamental principle that a patent’s claims define its scope of proprietary rights.
- 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.
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Chapter 8 Infringement 291 216 results (showing 5 best matches)
- analysis from the copyright to the patent context. Under this logic, common law rules against restraints upon alienation are based upon concerns over the free movement of goods, not upon geographical distinctions. Chief Justice Roberts reasoned that the common law principle against restraints on the alienation of chattels applies no matter where the sale occurs, even outside the United States. As a result, U.S. patents are now governed by the principle of international exhaustion.
- On the other hand, settled patent law principles establish that prior secret uses will not defeat the patents of other later inventors. In other words, while John’s secret use of an invention for more than a year will preclude from getting a patent, that use is not prior art available against if she files a patent on the same invention. Moreover, in such a scenario, where an earlier inventor made secret commercial use of an invention, and another person independently invented the same technology later and obtained patent protection, the trade secret holder could thereafter face liability for patent infringement if it continued to practice the technology.
- The patent law has long considered persons who encourage the unauthorized practice of another’s patented invention to have engaged in culpable conduct. Such individuals face liability for patent infringement even if they never directly employ the patented invention themselves. The patent law terms this sort of conduct “indirect” or “dependent” infringement. This type of liability is common in most branches of the law, including criminal law doctrines covering aiding and abetting and torts law doctrines such as vicarious liability.
- The disruptive technologies of the Information Age have challenged a number of longstanding patent law principles, including those pertaining to territoriality. Telecommunications, computer networks, and other technologies transcend national borders. But courts have traditionally entertained a strong presumption against the extraterritorial reach of U.S. patents. The traditional rule was that § 271(a)—the infringement provision of the statute—was contravened only if the patent infringement occurred entirely in the United States.
- The Federal Circuit had for many years adhered to the “national exhaustion” position. Under this line of reasoning, a “patentee’s authorization of an international foreign sale does not affect exhaustion of the patentee’s rights in the United States.” This principle relied upon the fact that U.S. patents exist independently of foreign patents, and that U.S. patents are effective only within the United States. As a result, this reasoning continues, a foreign sale cannot result in exhaustion of a U.S. patent. This legal doctrine—which restricts the exhaustion doctrine to domestic sales only—allows the U.S. patent to be used to block unauthorized imports of a patented product. Our use of the past tense in the first sentence of this paragraph may, however, have indicated where this story is going.
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Chapter 4 Novelty 71 322 results (showing 5 best matches)
- As we have explained above, patent applications and patents are considered prior art as of their filing date, effectively a statutory codification of the doctrine. Thus, if Professor Gutierrez filed a patent in March for a new medication to treat depression and Dr. Akamura filed a patent on the same pharmaceutical compound in September of the same year, the Gutierrez patent would operate as prior art against Akamura and a patent would be denied for lack of novelty. This result would hold even if Akamura could prove that she invented the device or process before Gutierrez, and remains true even though she had no knowledge of Gutierrez’s filing or the content of his application. This scenario illustrates the operation of the “first to file” principle of the AIA—even if Akamura was the first to invent, Gutierrez gets the patent because he was the first to file. This outcome represents a reversal of the prior state of U.S. patent law, as we shall see when we discuss the pre-AIA state
- One of the distinctive values of the U.S. patent system, at least prior to March 16, 2013, was that the first inventor in fact was entitled to a patent on her invention, even if she lacked the wherewithal to be the first to file an application at the USPTO. This first-to-invent system was difficult to administer, however, and also created disconnects with U.S. trading partners that universally maintained first-to-file patent priority systems. After decades of debate, the Congress enacted the AIA, a statute that relegated the principles that follow to the history books. Because numerous grandfathered patents and applications remain, however, patent professionals still need to remain conversant with the pre-AIA rules for a decade or more to come. The remainder of this chapter reviews the first-to-invent principles that prevailed prior to the enactment of the AIA.
- 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.
- court reasoned that an opposite approach was permissible in this case because of a traditional patent law principle that treats each new combination of joint inventors as a distinct “inventive entity.” This rule applies even where these combinations share individual inventors. Under this rule, the team of Bass, Jenkins and Horvat is considered a different inventive entity than the team of just Bass and Horvat. Each group of natural persons essentially acquires its own legal identity; they, as a whole, constitute “the inventor” of that technology. On this view, the two prior art patents at issue in the litigation were, as matter of legal technicality, the work of a different inventor than the one seeking the present patent, and thus relevant prior art.
- A simple example illustrates the distinction between these priority rules. Suppose that Professor Leistner synthesizes a new non-melting ice cream on August 1st, and files a patent application on November 1st of the same year, claiming the ice cream. Suppose further that Dr. Ohly independently invents the same ice cream on September 1st, and files a patent application on October 1st, also in the same year. Professor Leistner would be awarded the patent under the first-to-invent rule, while Dr. Ohly would obtain the patent under the first-to-file principle.
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Chapter 14 Patent Law in International Perspective 499 186 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.
- Globalization trends have resulted in growing international trade, burgeoning flows of information, and increasingly dispersed manufacturing facilities. One consequence of these trends is that now more than ever, innovative firms find patent protection within a single country insufficient. To provide meaningful protection, patent rights must instead be secured in multiple jurisdictions. A primary difficulty with this effort is that, under the principle of “territoriality,” a U.S. patent provides its owners with rights only within the United States. Furthermore, no true global patent system exists. Under current law, there is no way for an inventor to obtain an “international patent” through a single grant proceeding. The consequence is that inventors who seek patent rights overseas must file individual applications in each country or region where protection is desired.
- Through the national treatment principle, Paris Convention signatories agree to treat foreign inventors no worse than domestic inventors under their patent laws, so long as these foreign inventors are nationals of some other Paris Convention signatory state. It would be impermissible, for example, for the USPTO to charge nationals of a Paris Convention signatory state a higher application fee than is required of U.S. citizens, or to provide a shorter patent term for such inventors than is given to U.S. inventors.
- International agreements have resulted in the growing harmonization of the world’s patent systems. It is now possible to say that in every patent-issuing jurisdiction, such fundamental points as the requirements for obtaining a patent and the term of protection are substantially similar. Still, a number of important distinctions exist between the world’s patent laws. The remainder of this chapter offers a brief survey of some of the notable differences between the U.S. patent system and those of other countries.
- importing the patented invention. The TRIPS Agreement again creates an exception to this broad principle, however, allowing member states to limit patent rights under certain circumstances. Article 30 of the TRIPS Agreement states:
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Chapter 12 Patent Assignments and Licenses 435 109 results (showing 5 best matches)
- The court barred AMP’s suit, stating the general rule that when “a person sells a patent which employs an invention which infringes a prior patent, the person selling is estopped from bringing an action against his grantee for that infringement, even though the earlier patent is acquired after the sale of the latent patent.” Applying this principle, the court awarded the government an implied license to prevent the patentee from using a preexisting-but-later-acquired patent to derogate from the express license negotiated under AMP’s other patent.
- 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 license to practice a patented invention may exist even in the absence of express contractual language. This is because a patent license may be implied in certain situations. Thorough readers of this text have already encountered a handful of circumstances where the law effectively implies a license. The exhaustion doctrine, through which a legitimate purchaser may dispose of a patented article without regard to the patent, provides an example of an implied license. A legitimate purchaser also possesses an implied license to repair, although not to reconstruct, a patented product. A party who successfully asserts a defense of laches or estoppel may also, in a broad sense, be viewed as enjoying an implied license.
- In response to these criticisms of were an antitrust rather than a patent case” was a patent case and its ruling did not depend on the notion that post-patent royalties suppress competition, the Court explained. A distinction between the approaches of these two bodies of law was not surprising, Justice Kagan wrote: “The patent laws—unlike the Sherman Act—do not aim to maximize competition (to a large extent, the opposite).” Therefore, in judging the propriety of post-expiration royalties, had been decided in view of the patent policies of respecting the statutory term and maintaining the public domain.
- 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 10 Remedies for Patent Infringement 379 140 results (showing 5 best matches)
- Section 283 of the Patent Act allows courts to “grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” This statute serves as the basis for both permanent and preliminary injunctions.
- 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. If the nature of the article does not allow this notice to be placed directly upon it, a label may be placed on the article or its packaging. The America Invents Act also provided for “virtual marking.” 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.
- In the patent law, the proximate cause inquiry has focused upon whether the lost profits were reasonably foreseeable, rather than indirect, removed or remote. The Federal Circuit has explained that not every injury of which the patentee complains may be the type the patent laws were designed to remedy. For example, if the patentee is so shocked to learn of the infringement that he suffers a heart attack, he is not entitled to claim damages for his medical misfortune under the Patent Act. Although this sort of harm is traceable to the infringement, the courts would find this injury too remote to justify compensation under the patent laws. It is an unforeseeable injury because most patentees simply don’t react to the news of infringement by clutching their chest and falling to the ground.
- The Supreme Court has nonetheless identified an arguable exception to this general principle. In the Supreme Court held that a patent owner may recover lost foreign profits for infringement under § 271(f)(2) of the Patent Act. As discussed earlier in this text, Congress intended this statute to close a loophole through which enterprises could avoid infringing patents on combination products. Prior to the enactment of § 271(f)(2), enterprises could avoid infringing a combination patent simply by exporting components of the patented invention in an unassembled state. Because the components would then be assembled abroad, the patented combination was never available domestically—and hence the claimed invention was never “made in the United States,” a necessary condition for violation under § 271(a).
- decision has proven significant even outside the sphere of intellectual property, but it has been particularly profound in the field of patent law. Post- , patent proprietors that actually exploit the patented invention in the market place usually obtain permanent injunctions when they prevail, just as they did previously. In contrast, courts now generally deny injunctive relief to non-practicing entities, to firms that do not directly compete with the adjudicated infringer in the marketplace, and in circumstances where the patented invention forms only a minor component of the adjudicated infringement.
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Chapter 6 The Patent Instrument 185 203 results (showing 5 best matches)
- The Bates and Hobbes example also illustrates that patents need not disclose information well understood by knowledgeable artisans. As patent specifications are directed towards persons of skill in the art, they need not, and for purposes of brevity preferably do not, start from the most elementary principles and work their way to the claimed technology.
- 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.
- illustrates this principle. The Morse in the caption of this case was Samuel Morse, the inventor of the telegraph. The final claim of his telegraphy patent provided:
- This claim also illustrates a peculiarity of the patent law: the reluctance to claim an empty space, such as a chamber, hollow, hole, or gap, directly. Instead, drafters usually define such spaces in terms of the structures that form them. This rule may seem vacuous, but it is commonly observed in modern patent practice. Apparently patent drafters believe that claims should recite structure—not the absence of structure!
- Courts routinely state that the patent applicants are allowed to coin their own terms for use in claims. As expressed in the vernacular of the patent law, “a patentee is free to be his or her own lexicographer.” However, newly minted terms may not be misdescriptive, nor should the applicant employ such banal terms as “gadget” or “widget.” The courts and USPTO have been even more hostile to the use of trademarks or trade names within patent claims. Typical of such cases is .” The USPTO reasoned that the manufacturer of that well-known trademarked laminate product could change the composition of FORMICA at any time if it so pleased, rendering Bolton’s claim of indefinite scope.
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Chapter 13 Specialized Patent Legislation 461 192 results (showing 5 best matches)
- Recall that at the time of the case the term of a patent was 17 years from date of issue. If the FDA did not allow the drug to be marketed for 10 years after the patent issues, the originator of the drug would only secure 7 years of exclusivity, less than half the time contemplated by the patent laws.
- For readers of an urban bent, the entire subject of plant patents may seem remote and arcane. You are, nonetheless, exposed to the fruit of the plant patent system every time you visit the supermarket (pun intended). Surely you have encountered HONEYCRISP® apples. That hugely popular variety was the subject of a plant patent designated PP 7,197. That patent expired in 2008 but the name remains protected by trademark law, which explains the premium price these apples command.
- 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 and the submission of an NDA, plus the entire period spent by the FDA approving the NDA.
- 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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Preface to the Third Edition v 4 results
- 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.
- 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.
- We are especially grateful to Betsy Kuhn, of Georgetown Law’s Office of Faculty Support and Michael Sheehan, G.W. Law class of 2019 for their meticulous work in reviewing the manuscript, and to our editors at West Academic for their constructive input and patience with us as we endeavored to finalize this volume. Of course any remaining shortcomings are entirely our own. We hope you enjoy our efforts.
- The time for a new edition seemed at hand. Undertaking the work for this edition also allowed us to refine the organization of the materials, expand treatment of several subjects, and add examples or clarifications where we thought they might enhance understanding. At the same time we have tried to maintain features that earlier readers told us they found helpful, especially the copious use of concrete examples. Our goal remained the same as with the initial version of the book—to craft a text that will prove useful to both students new to the subject, and experienced lawyers seeking to pinpoint clarification on specific topics.
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Chapter 5 Nonobviousness 151 146 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.
- . reflects these principles. The patented invention consisted of a “sandwich” immunoassay using monoclonal antibodies. Antibodies are components of the immune system, while a monoclonal antibody is an antibody of exceptional purity and specificity. Monoclonal antibodies are able to recognize and bind to a specific foreign molecule, called an antigen. The patented invention used this technology as a diagnostic tool, allowing doctors to identify particular infectious agents.
- The courts tend to come down on the side of non-obviousness in situations like these. This may explain the result in the case, the one member of “the Trilogy” that upheld the patent. There, as you may recall, the combination of metals in the patented battery produced unexpectedly superior results. This approach makes good sense as a matter of innovation policy. The patent incentive may well act to stimulate technological development in unpredictable more than predictable arts because, everything else being equal, the reward of a patent is easier to obtain in those disciplines. This practical aspect of nonobviousness law may direct research efforts to areas that are the most poorly understood and, ultimately, make an unpredictable art less so.
- 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.
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Chapter 3 Utility 59 44 results (showing 5 best matches)
- 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 USPTO does not oversee laboratories or test facilities. As a result, USPTO examiners ordinarily judge the utility of a claimed invention based upon their understanding of scientific and technical principles. If necessary, USPTO examiners will ask patent applicants to submit test results or more detailed information explaining the practical utility an invention is alleged to possess.
- 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.
- theory that underlies much of patent law. Since the patentee receives something of value—a 20-year exclusive right to exploit the invention—the public should receive something in return. Normally, what the public gets is the disclosures that are contained within the patent instrument, which can be used by others working in the field for insight and to advance their own work. If the invention has no value, however, the disclosure is worthless, and having given the public nothing of value the patent applicant is entitled to nothing in return. This rationale informed the Supreme Court’s decision in
- Although the utility requirement is readily met in most fields, it presents a more significant obstacle to patentability in the disciplines of chemistry and biotechnology. In these fields, inventors sometimes synthesize compounds without a precise knowledge of how they may be used to achieve a practical working result. When patent applications are filed claiming such compounds, they may be rejected as lacking utility within the meaning of the patent law.
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Index 579 108 results (showing 5 best matches)
Summary of Contents 28 results (showing 5 best matches)
Table of Contents 67 results (showing 5 best matches)
Table of Cases 569 21 results (showing 5 best matches)
- Leeds v. Commissioner of Patents and Trademarks, 225
- Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, In re, 176
- Innovatio IP Ventures, LLC Patent Litigation, In re, 393
- Board of Trustees of Leland Stanford Junior University v. Roche Molecular Sys., 412
- Regents of the University of California v. Eli Lilly and Co., 201, 202, 203
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West Academic Publishing’s Law School Advisory Board 10 results (showing 5 best matches)
- Professor of Law Emeritus, University of San Diego Professor of Law Emeritus, University of Michigan
- Professor of Law, Chancellor and Dean Emeritus University of California, Hastings College of the Law
- Professor of Law Emeritus, Pepperdine University Professor of Law Emeritus, University of California, Los Angeles
- Justice Thurgood Marshall Distinguished Professor of LawUniversity of Virginia School of Law
- Frank R. Strong Chair in LawMichael E. Moritz College of Law, The Ohio State University
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Copyright Page 2 results
- The publisher is not engaged in rendering legal or other professional advice, and this publication is not a substitute for the advice of an attorney. If you require legal or other expert advice, you should seek the services of a competent attorney or other professional.
- Printed in the United States of America
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- 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.
