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Patent Law Overview

Patent law aims to encourage innovation by granting limited monopolies for inventions that are novel, non-obvious, and useful. Judicial interpretation generally favors protecting patent rights, especially for pioneering inventions. To be patented, an invention must be novel, non-obvious, useful, and fall within patentable subject matter. Literal infringement requires practicing all elements of a patent claim. The doctrine of equivalents allows for a finding of infringement if an element is functionally equivalent to what is claimed, even if literally different. Improvement patents and blocking patents can issue for advances on earlier inventions.

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Harbeer Singh Sethi
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59 views36 pages

Patent Law Overview

Patent law aims to encourage innovation by granting limited monopolies for inventions that are novel, non-obvious, and useful. Judicial interpretation generally favors protecting patent rights, especially for pioneering inventions. To be patented, an invention must be novel, non-obvious, useful, and fall within patentable subject matter. Literal infringement requires practicing all elements of a patent claim. The doctrine of equivalents allows for a finding of infringement if an element is functionally equivalent to what is claimed, even if literally different. Improvement patents and blocking patents can issue for advances on earlier inventions.

Uploaded by

Harbeer Singh Sethi
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
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Download as PPT, PDF, TXT or read online on Scribd
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Patent Law Overview

Patent Policy
 Encourage Innovation
 Disclose Inventions
 Limited Time
 Only a Right to Exclude
Judicial Construction
 Prejudice in Favor of Protection of
Patent Rights
 More Protection for Pioneer Patents
 More Slack for Major Improvements
 Clotting Factor Case
Patent Law Concepts
 Patentability
 Infringement
 Defenses to Infringement
 Remedies for Infringement
 Design and Plant Patents
 Not really the same
Patentability

Can You Get A Patent?


Patentable Subject Matter
 Process, machine, manufacture,
composition of matter, or improvement
therefore
 No Abstract Ideas
 No Natural Products
 Tree bark
 Mushrooms
 No Printed Matter
Utility
 Must Have Utility
 "A patent is not a hunting license.“
 Must Actually Work
 No Perpetual Motion Machines
 No More Moral Utility Issue
6,293,874
 User-operated amusement apparatus for
kicking the user's buttocks
 An amusement apparatus including a user-
operated and controlled apparatus for self-
infliction of repetitive blows to the user's
buttocks by a plurality of elongated arms
bearing flexible extensions that rotate under
the user's control.
Novelty and Statutory Bars

35 U.S.C. §102
(a) [novelty]
 the invention was known or used by
others in this country, or patented or
described in a printed publication in this
or a foreign country, before the
invention thereof by the applicant for
patent
(b) [statutory bar]
 the invention was patented or described
in a printed publication in this or a
foreign country or in public use or on
sale in this country, more than one year
prior to the date of the application for
patent in the United States
(e) [secret prior art]
 The invention was described in a patent
granted on an application for patent by
another filed in the United States before
the invention by the applicant for patent
(f) [derivation]
 he did not himself invent the subject
matter sought to be patented
(g) [priority; first to
invent]
 before such person's invention thereof, the
invention was made in this country by another
inventor who had not abandoned, suppressed,
or concealed it. In determining priority of
invention under this subsection, there shall be
considered not only the respective dates of
conception and reduction to practice of the
invention, but also the reasonable diligence of
one who was first to conceive and last to reduce
to practice, from a time prior to conception by
the other
Infringement
 Can You Exclude A Competitor?
Interpretive Sources
 Claim Language
 Patent Specification
 Prosecution History
 Extrinsic Evidence
Claim Language
 What are claims?
 See Super Soaker Patent
 What do the claims claim?
Patentee as Lexicographer
 Has the Patentee defined terms so they
do not have their ordinary dictionary
meaning?
 This is allowed, but you are stuck with it
if you do it.
Patent Specification
 Are the claims consistent with the written
description and/or drawings?
Prosecution History
 File Wrapper
 The patent case file
 Were terms clarified during prosecution?
 Were claims narrowed during
prosecution?
 Prior Art?
 Enablement?
 Just a Picky Examiner
Extrinsic Evidence
 (Only for figuring out the patent)
 Should experts be allowed to testify about
the meaning of claims and terms?
 Should documents other than the patent
and the file wrapper be allowed as
evidence?
The Role of the Courts
 Facts – Jury
 Great deference to jury finding on appeal
 Law – Judges
 Little deference to trial judge on appeal
 What is claim interpretation?
Claims as Law
 What was the rule when the constitution
was ratified?
 Infringement was tried to a jury
 There were no claims
 Claims Interpretation is Law - Markman
 Judges are skilled in figuring out complex
documents
Impact of Markman
 Infringement depends on meaning of the
claims
 Trial judge instructs on the meaning of
the claims
 Jury decides infringement
 Appeals court reinterprets claims, which
nullifies the verdict
Literal Infringement
 Super Soaker case
 Must infringe all elements
 If there 5 and you have 4, then no
infringement
 What was the SS missing?
 Lights, noise
 Internal water chamber
Why Require All Elements to
be Infringed?

 Encourages innovation
 Usually an improvement to reduce
elements
 If you infringe all the elements, but add
more, you infringe
How do You Avoid This?
 Nested claims
 Claim for the basic design
 Then Basic + Lights
 Basic + Water
 Basic + Water + Lights
 Etc.
 Limited by Prior Art and Enablement
The Doctrine of Equivalents

Is it functionally the same, but


literally different?
Graver Tank
 Prior art teaches alkaline metals and
manganese can be used as flux
 Patent is a mix
 Infringing product substitutes a different
metal in the mix
 Court said it was equivalent
Warner-Jenkinson
 Ultra-filtration
 Ph >6 < 9
 Infringer
 Ph < 6
 Why was > 9 Excluded?
 Prior Art
 Why was < 6 excluded?
When Do You Judge
Equivalence?
 At the time of infringement
 Why?
 If you knew at the time of the patent, you
would have included it
 What if you did know and did not include
it?
 What if you include stuff you do not
claim?
Equivalence and Elements
 Why does equivalence threaten the
elements rule?
 Can blur the function of individual elements
 How does the court deal with this?
 Requires that each element be equivalent
“Reverse” Doctrine of
Equivalents
 (Almost never accepted)
 Equivalence is used to broad a claim for
infringement analysis
 Reverse Equivalence is used to narrow a
claim
 Why?
 Reward innovation in improving a patent
Scripps Clinic Case
 Clotting factor
 Scripps had a patent on the product from blood
 Genetech wanted a patent on a genetically
engineered version
 Product patents are usually independent of the
source
 This was so much purer and more effective that
court found it patentable
Improvement Patents
 Jepson Claims (n38/p284)
 Special form
 Not always necessary
 PTO will allow improvement patents
 Generates a blocking patent
Contributory Infringement
 It is also illegal to “aid and abet“
infringement
 Bard v. ACS
 ACS told docs to use its catheter in ways
infringed Bard’s patent
 Defense is non-infringing use for defense
 Congress let the docs off the hook
 VCR – no / DAT - yes

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