PATENT OUTLINE

							PATENT OUTLINE
(I) Analysis a. Is it proper patentable subject matter? b. Is the invention novel? i. No prior art directly on point? c. Is the invention non-obvious i. Are there two or more prior inventions combined with a need that give rise to a motivation to combine?

(II)

TYPES OF PATENTS
a. Nature of Patent: Anything under the sun made by man. b. Types: i. Utility 1. Any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 2. Ex. Business Process or a Chemical ii. Design 1. A new, original, and ornamental design for an article of manufacture. iii. Plant 1. A vegetable, fruit, flower etc via genetic engineering.

(III)

RIGHTS GIVEN BY A PATENT
a. Exclusive right to exclude others from: i. Make ii. Use iii. Sell iv. Import v. Offer to Sell vi. Process b. Each right is alienable. c. Duration of Patent: 20 Years from date of filing. d. Ownership: i. If two inventors are listed on a patent, then each one may grant licenses to the patent independently of the other, absent an agreement to the contrary

(IV)

ELEMENTS OF A PATENT APPLICATION
a. Provisional Application i. Does not require claims ii. Is not Examines iii. Cannot Mature into a patent. iv. Provides a priority date that is earlier. v. Defers Patent Prosecution Costs while marketability of patent can be determined.

vi. 1 year Term. vii. The 20 year Duration of the patent begins running on the filing of the provisional app b. Non-Provisional Application i. Elements of a Non-Provisional Application: 1. Specification a. Written description of the invention and at least one claim for protection. b. Description = Enabling Disclosure c. Claim = Subject Matter / Scope of patent. i. Claims are infringed, not specifications. ii. Claims may be independent, dependent on an earlier claim, or dependent on multiple earlier claims. 2. One or more drawings (if necessary) 3. An oath or declaration signed by the inventor a. Gives rise to a duty to disclose any material information 4. The required filing fees. ii. Amending an Application 1. Relation Back Doctrine: Have to file an all new app, but claim priority to the previous app so long as it is still pending (not abandoned). 2. When get a rejection have 3-6 months to file an appeal. a. Use drawings to support application. 3. Can amend the claims and amend the specification as long as don’t introduce new matters (minor things like grammar). c. Enabling Disclosure (§ 112) i. Gov’t gives rights for a full description of the Invention ii. Rule: Must disclose Sufficient Information to enable a person ordinarily skilled in the art to make and use the invention without Undue Experimentation. (Morse Case) 1. Must disclose the state of the art at the time of the application so can determine: a. What ordinary skill is, and b. What is novel and non-obvious. 2. Must be enabling at the time of filing or will have ot file a new app with a later date which will blow priority date with regard to prior art. a. Way around is to file a continuation app from an earlier patent app. iii. How to Write a Disclosure: 1. Use Broadening Language: will protect in litigation.

a. Instead of saying refrigerator with a TV, say any kitchen appliance with a TV. 2. Use drawings 3. If it is an unpredictable art the patent office will want more enablement and more disclosure. iv. Definiteness (§ 112) 1. The language used in the enabling disclose must distinctly claim: a. Enablement (see above) b. Patentable Subject matter. c. Other documents incorporated by reference 2. Purposes: a. Provide a clear warning to others as to what constitutes infringement of the patent b. Provide a clear measure of the invention in order to facilitate a determination of patentability. 3. Using Definitions: a. Can use proprietary words so long as define. b. Can redefine common words for the purposes of the act. c. Court will go to dictionary if a term is not defined. d. Rule: When there is a choice between a broader or narrower adopted meaning of a claim, court will interpret narrower. 4. Interpreting the Language of the Application a. When there are two or more reasonable interpretations of a word, clause, or idea, the narrower interpretation will be used. (Athletic Alternatives)

v. Best Mode
1. As part of the enabling disclosure, must incorporate the best mode as contemplated by the inventor at the time of filing. a. Don’t need to give away business advantages. i. Ex. Coconut Oil is best mode, don’t need to say where to get it. b. When a new best mode arises: i. If it is easy to reverse engineer, get a patent. ii. c. d. Important Dates i. Reduced to Practice Date: 1. The date on which the invention actually worked for its intended purpose.

2. NOT the date of conception or the date when the inventor had a reasonable expectation it would work. 3. Exception: If an invention is suppressed, it does not receive priority over subsequent inventions reduced to practice during the period of suppression. (Fujikawa) ii. Critical Date: 1. A patentable invention must not be used in commerce more than a year prior to the filing of a patent application. If it is, patent rights are waived. iii. Priority Date: 1. Domestic: a. Priority goes to first inventor to reduce to practice if the apps are both pending at the same time. § 102(a) b. Priority otherwise goes to first to file. c. 2. International: When filing a domestic patent and have a foreign patent, if the foreign patent was filed within the last 12 months, get to relate back to its filing date. a. Must specify the foreign patent in the domestic app. b. First to file in most foreign countries get priority. 3. Derivative Patents: Secondarily issued patents relating back to an earlier patent get the benefit of the earlier patents priority date (V)

PROSECUTING A PATENT
a. -Main Prosecution Issues: i. § 112(2) Not Definite enough ii. § 102: Not Novel: There is one Prior Art with same description iii. § 103: Not Non-Obvious: Found at Least two prior Art that each have some of the elements that could be combined to make your patent. (“TSM”) Teaching / Suggestion b. Prosecution Procedure i. Initial Processing of the Application 1. Date Stamp and App Number assigned 2. Formal Requirements Checked 3. Class and Sub-Class Determined ii. Examiner Assigned in Sub-Class Group iii. Examination 1. Formalities Substantively Met? a. Can only claim one invention 2. Is disclosure enabling? 3. Prior Art Search iv. Office Action 1. Tells all problems with App v. Applicant Response

1. Has up to 6 months to respond vi. Reconsideration and Allowance 1. USPTO issues notice of Allowance. vii. Alternative: Final Office Action – Rejection 1. Applicant can: a. Appeal to Board of Patent Appeals and Interferences b. Take allowed claims and cancel others c. File a continuing application.(amended new application with benefit of earlier filing date). viii. Publication 1. Prior to 1999 patents were kept secret by the PTO. 2. After 200 Patents are Published 18 months from filing date. c. Patentable Subject Matter i. Utility Patent: Any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. ii. Utility: Presumption of Utility. 1. USPTO has the burden of proving that one of ordinary skill in the art will doubt the utility for what the applicant says. iii. Laws of nature cannot be patented. 1. i.e. algorithms cannot be patented unless they are a process. 2. Comes into play with computers. Must make sure it is a process. a. The combination of algorithms and computer steps is patentable, although individually not patentable. iv. Business Method: Must be applied in a useful way to produce a “useful, concrete, tangible result” (State Street Bank). d. Novel (§ 102) i. A patent must be novel in that no one has previously invented the claimed invention. 1. Hindsight is prohibited ii. Prior Art 1. Defined: An invention with the same elements as the current app. 2. A person shall be entitled to a patent unless the invention has prior to the patent application been: a. Known, publicly used or sold by others in the US i. KNOWN: (102g) 1. Complete Product / Process cannot have been reduced to practice by another previously a. RTP = Actual construction of the invention and testing to

determine if it works for its intended purpose. (DSL) b. Must be tested in intended environment, OR c. Environment in which conditions are sufficiently similar to the intended environment to show results for intended purpose. d. 2. Previous inventor cannot have abandoned, suppressed or concealed it. ii. PUBLIC USE / SALE 1. Two part test: (Pfaff) a. Must have been available to public, i. No affirmative steps to market are required. ii. One person is a public use. iii. Commercial exploitation constitutes public use even though process held secret. (Metallizing) b. More than 12 months prior to application 2. EXCEPT: if it the use is a private use: (Malekulan) a. Legitimate expectation of privacy. i. In house, office, or under an NDA ii. Not reverse engineerable if in the public eye. b. A Party is a public use. iii. NOT PUBLIC USE 1. Use under inventors control not public use. 2. Experimental Defense (City of Elizabeth)

a. If bona fide experiment under control of inventor then ok. b. If no supervision and control, not experiment. b. Previously Patented in US or Abroad i. Prior to Invention, or ii. At least a year prior to the application for patent.. c. Described in a printed publication anywhere in the world i. Prior to Invention, or ii. More than a year prior to the application to patent. iii. Requires: Sufficient accessibility to those interested in the art exercising reasonable diligence iv. Must be physically and logically available to hypothetical member of the interested public iii. Or, the applying inventor is not the actual inventor. e. Non-Obvious (§ 103) i. A Patent may not be obtained even though it is not identically disclosed as set forth in §102 if: 1. If the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art. a. Must find two patents that together would give rise to motivation to combine. b. EXCEPT: Where the previous patents and/or inventions with the same subject matter were owned by the same person as is presently applying for Patent. i. Owned = Joint or Sole Ownership. 2. Whether obvious or not is a question of fact: a. Look to: i. Prior Art 1. Does it demonstrate a (Graham Factors) a. teaching, i. Is it from the same field of endeavor? ii. What is the ordinary level of skill in the field.

b. suggestion, i. Is the new invention close to the old, or c. motivation to combine references i. Was there a need, that ii. Someone of ordinary skill in the art, iii. Would recognize, such that they would be able to combine prior art solve the problem in the manner the current art solves it? 2. Non-obvious if a proper combination of all prior art does not function properly. (Lorenz) ii. Non-Obvious Secondary Considerations: 1. Commercial Success of the Patent (Non-Obvious; i.e if so obvious why did make so much money?) 2. Failure of others to find a solution to the problem (Non-Obvious) 3. Copying of the invention by others (Non-Obvious) 4. If changing an element allows the invention to scale up or down more than what SOOSITA would expect. b. Hindsight is Prohibited (VI)

LITIGATING A PATENT
a. Invalidating a Patent i. Can request that the USPTO re-examine an issued patent as a means of invalidating without litigation. Costs $2k. ii. Can litigate on basis that is not novel or non-obvious. 1. Presumption of validity. 2. Must rebut by clear and convincing evidence. b. Literal Infringement i. Two part procedure to prosecute an infringement claim: 1. Construe the patent a. i.e. determine the scope of the patent i. Court will look to specification and prosecution history to inform their interpretation. 1. Look to any specially defined terms.

ii. If still not clear will look to extrinsic evidence 1. Expert Testimony iii. If still not clear 1. Court will use plain language. 2. Determine whether the accused product infringes the claim as properly construed under § 271(a) a. If doesn’t operate in exactly the same manner, b. Can still be liable under the doctrine of equivalents i. Limited by: 1. All-Elements Rule 2. Prosecution History Estoppel ii. Whoever without authority: § 271(a) 1. Makes, uses, offers to sell or sells any patented invention in the US, or it’s structural equivalent, or 2. Imports in the US any patented invention 3. Is committing Direct Infringement 4. Exceptions: a. Improvements on existing patents fall under the existing patents rights, except: i. When the new improvement is novel and non-obvious. b. Usually the first people that get patents get the widest patents, when an industry matures they get narrower and narrower. 5. Example: a. ABC patent holder against AC patent holder against BC patent holder. b. ABC cannot win against the others because they are all distinct and each is missing an element of the other. c. AC and BC can win as against ABC because ABC has the entire element of each of AC and BC. iii. Doctrine of Equivalent Infringement 1. Liability if: Same Function-Way-Result: Substantially the same function in substantially the same way to achieve the same result. a. Unless, i. Prior Art, or ii. Prosecution History Estoppel (“PHE”) 1. Cannot claim Doctrine of Equivalent to: a. Anything surrendered by amendment related to

patentability during prosecution. b. Anything in the public domain. c. For foreseeable equivalents that weren’t claimed in the patent. 2. PHE is rebuttable if can establish a. Equivalent was unforeseen at the time of invention. b. Narrowing amendment tangential to patentability. 2. Liability if: Meet Test 1 above + Equitable Factors a. Did accused infringer know of patent? b. Did infringer develop independently? c. Indirect Infringement i. There must be direct infringement by someone for there to be indirect infringement. ii. Active Inducement: 1. § 271(b) Whoever actively induces infringement of a patent shall be liable as an infringer iii. Contributory Infringement 1. § 271(c) Importing Components to Combine: Anyone who offers to sell or sells or imports into the US a component of a patented invention, a. constituting a material part of the invention, b. that knows the component is made for use in an infringement of such patent and not substantial noninfringing uses, c. Shall be liable as a contributory Infringer. iv. Foreign Activity 1. § 271(f) Exporting to Combine: Anyone who supplies or causes to be supplied in or from the US all or substantially all the components of a patented invention, in such manner as to actively induce the combination of such components outside the US in a manner that would infringe the patent if it was combined in the US is liable of infringement. 2. § 271(g) Importing Goods made with a patented process: Anyone who imports into the US or offers to sell, sell or uses in the US a product made by a patented process shall be liable as an infringer. v. (VII)

DEFENDING A PATENT
a. License

b. c. d. e. f.

g.

i. Royalties may only be extracted during the patent monopoly. Royalties that extend beyond then are unenforceable and void. Prior Use i. Experimental Use First Sale Doctrine Inventorship / Ownership Suppression / Concealment / Abandonment i. For the period in which an inventor has suppressed or abandoned an invention. 1. Supression = unreasonable delay in prosecution of a patent. 2. Abandonemnt = surrender of invention to the public. Can be express or implied. 3. Fujikawa Equitable Defenses i. Laches – inexcusable delay prejudicial to defendant. ii. Estoppel – when warranted wouldn’t sue or previously litigated. iii. Inequitable Conduct – must prove such conduct happened during app process. iv. Misuse – When patentee expands scope of grant with anticompetitive effect. 1. Court swill withhold any remedy for infringement or breach of a license. 2. Rights of the patent owner will be restored if and when the misuse is purged. v. Anti-Trust 1. Must prove either a. Patent obtained through knowing and willful fraud. i. “but for” fraud test. b. Clear intent to deceive and reliance 2. Infringement suit is a “mere sham” to cover nothing more than interference with business relationships. a. Must show suit is: i. “Objectively Baseless” – no rx litigant would expect success on the merits ii. “Subjectively Motivated” – use of process as opposed to outcome as an anticompetitive weapon. vi. Permissible Repair 1. Three Situations (Husky) a. Reconstruction: Entire patented item is spent and infringer reconstructs to make usable again. b. Permissible Repair: Spent part of combination patent is replaced.

c. Permissible Repair 2: Park is not spent, but replaced to enable the machine to perform a different function. 2. Inquiry is whether part is readily “replaceable” (VIII) REMEDIES a. Damages (§ 284) i. Lost profits or a reasonable royalty + interest and court costs. 1. Lost profits require “but for” causation to show would have made the sale but for the infringement. (BIC) 2. All Sales derived by a company in a market the patent holder does not compete in (Panduit). 3. For products that compete in same market segment: % of market share of infringing product = % of infringers lost profits recoverable. ii. SOL on damages is 6 years. Beyond that no recovery. iii. Treble damages for willful infringement. b. Injunction i. Always issued after judgment of infringement unless sound reason not to. 1. i.e. public safety my justify denial or delay to allow phasing out of the infringing product.
Section 102, 103, and 271. QUESTIONS: Best Mode: When a new best mode arises, and it’s easy to reverse engineer so want patent protection, need to file new patent? Does it have to be done within 1 year of first commercial use? RTP = Reduction to Practice NEED DEFINITION OF REDUCED TO PRACTICE By Definition, suppressed / concealed / abandoned = not putting an invention to commercial or public use? Therefore, if not putting to commercial or public use then does not have priority over inventions created in suppression period? If prior to 1999 the PTO kept patents secret, how would people search to see if they were possibly infringing on anyone’s patent?