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Patents and Trade Secrets Long Outline

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Patents and Trade Secrets Long Outline Powered By Docstoc
					                                                   INTELLECTUAL PROPERTY LAW

    I. TRADE SECRETS
          A. Defined under UTSA (4)
                  i. A trade secret is defined broadly as information including: any formula, pattern, program device,
                     method, technique, process or compilation used in a business which provides an economic advantage to
                     its owner by not being generally known or readily ascertainable by proper means by others, and it
                     must be kept secret.
                          1. not limited to technical device
                          2. physical design of how to improve
                          3. Know how, things that are tricks of the trade
                          4. competitive info, customer lists, pricing strategies
          B. 4 Requirements
                  i. The right kind of subject matter: it must be information that is eligible to be protected as a Trade
                     Secret
                          1. Readily identifiable
                 ii. It must be something that isn’t commonly/generally known nor readily ascertainable
                          1. if a competitor or the member of public could determine what the tech is by examining the
                             product then it can’t be protected b/c its self disclosing tech
                          2. if it can only be ascertained thru extraordinary measure then its still protected as a TS
                iii. IT must be used or planning to use it – and that use must lead to some kind of economic advantage to
                     the person protecting it as a result of its secrecy
                          1. it makes the product more desirable, makes it easier to selel or makes product cheaper

                    iv. Must take reasonable means to safeguard the secrecy
                           1. Before misappropriation occurs, - the owner must make reasonable efforts to maintain the
                                information’s secrecy ie some procedure given your industry & the technology to prevent it
                                from being publicly known
                                    a. disclosure agreements for employees
                                    b. Policy and education for employee
                                    c. password protection for computers
                                    d. Exit interview
                                    e. Non disclosure agreements
                                              i. Note: if info is of general skill & knowledge acquired during course of
                                                 employment employee is free to take & use later
                                             ii. Customers lists are protected , although prospective customer is less
                                                 ascertainable
                           2. Inadvertent disclosure doesn’t end protection

           C.   Factors    that may be used to determine if TS was protected
                      i.   Extent to which the information was known outside of the business
                     ii.   Extent to which information is known by employees or others in the business
                    iii.   Extent of Safeguards taken to protect secrecy
                    iv.    The Value of the information
                     v.    Efforts required to develop the information
                    vi.    Ease of acquiring or developing the info by others

           D.   Uniform Trade Secret Act & Misappropriation
                     i. A trade secret misappropriation cause of action must be based on either an assertion that
                            1. Defendant acquired the TS through “improper means” or
                                    a. Misappropriation
                                              i. Acquisition of trade secret by a person who knows or has reason to know
                                                 that the trade secret was acquired by improper means OR
                                             ii. Disclosure or use of a trade secret w/o express or implied consent by a
                                                 person who OR
                                                     1. Used improper means to get knowledge of the TS or

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                                                       2.   At the time of disclosure/use knew that his knowledge of the TS
                                                            was
                                                                a. Derived from someone who used improper means to get it
                                                                b. Acquired it under circumstances where a duty to secrecy
                                                                     was owed or
                                                                c. Derived from another person who owed a duty of secrecy
                                                                     to the owner
                                               iii. Before material change in his position he knew that it was a TS and that
                                                    knowledge of it was acquired by accident or mistake

                                       b.   Improper Means
                                                i. Theft, bribery, misrepresentation, breach or inducement of a breach of
                                                    duty , espionage through electronic or other means
                              2. Defendant acquired the TS by breach of duty of confidentiality based on an express implied
                                  contract
                     ii. Note under Pepsi Co P can claim misappropriation by showing that D’s knowledge of info will lead to
                         inevitably disclosure of the TS thus can enjoin D from disclosing it

           E.   Remedies for Trade Secret Misappropriation
                     i. Protective Order
                             1. Make sure TS is under seal during trial to prevent being in the record
                    ii. Preliminary injunction
                             1. Only granted for time it takes to rectify misappropriation
                                     a. Must show irreparable harm &
                                     b. Likelihood of success on the merits
                   iii. Permanent Injunction
                             1. can last forever if willful or malicious misappropriation

           F.   Loss of    Trade Secret
                      i.   When information becomes publicly available
                     ii.   Lapse in security efforts
                    iii.   Use of information is discontinued
                    iv.    Information no longer confers economic advantage

           G.   Advantages & Disadvantages
                     i. Advantages
                            1. don’t have to worry that the intellectual property right ends since it has unlimited duration
                            2. don’t have to disclose what your technology is to protect it
                    ii. Limitations
                            1. you must keep it secret, if you fail then its no longer a trade secret , so protection can lapse
                                 if one or more of the req ceases to exist
                                      a. it becomes known publicly
                                      b. if there is lapse in reasonable safeguards in keeping it secret
                            2. you have limited protection – trade secret is only protected against misappropriation of the
                                 trade secret
                                      a. someone using it through improper means – only protected through misappropriation
                                      b. if someone independently develops it , or reverse engineers or due to slip up on your
                                          part – you are not protected
                            3. you can only get injunction from misappropriation for the length of time it would have taken
                                 them to interpedently develop the technology usually max 18-20 months




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   II. PATENT RIGHTS
          A. Authority
                  i. Patents exist only by virtue of Fed Constitution Art 1 sec 8 – there are no common right patents &
                     states don’t have rights to issue
                          1. “Congress is authorized to promote the progress of science and useful art by securing for
                              limited times to authors and inventors the exclusive right to their respective writings and
                              discoveries “
                 ii. Statutory Basis
                          1. Patent Act 1952
                                   a. “Whoever invents or discovers any new and useful process, machine , manufacture or
                                        composition of matter, or any other useful improvement of one of these may obtain a
                                        patent “
                          2. 35 USC 1
                iii. Administrative Process
                          1. Patent Rules of Practice – promulgated by patent office governing how to apply and how they
                              are revived
                                   a. 37 CFR Part 1.1
                          2. Manual of Patent office Procedure- internal guideline for patent office its an internal
                              encyclopedia of law
          B. US Patent Types
                  i. Utility Patent – it’s a new technology , patent contains pictures & explanation of what technology is
                          1. Mechanical
                                   a. Something that is a manufactured item
                          2. Chemical
                                   a. Either a chemical compound or some process for making or using chemical compound
                          3. Electrical
                                   a. Computer technology or electric tech or computer software
                 ii. Design Patents
                          1. Assignee – person that the patent rights are assigned to
                          2. can get a design patent on an ornamentation – it can’t be functional must be static ex handbag
                                   a. the only thing that is covered is it ornamental appearance
                iii. Plant Patents ( are rare)
                          1.   can obtain patents on species or variant of plants so long as it doesn’t occur naturally & have
                              been able to asexually produce it

            C. Why Grant Patents
                   i. Patents balance Dual public interest
                          1. prohibition of Monopolization and Restraints on competition
                                  a. give limited exclusivity to inventor shielding competition but yet it restraints
                                       competition to prevent monopolization
                          2. Promotion of Innovation and disclosure of Technology advances

            D. Key Patent Law Policies
                     i. Provide potential financial inducements to invention and investment In R&D
                    ii. Mandate full disclosure of technological developments – to the public
                  iii. Provide limited period of exclusivity to inventors and their assignees/licensees
                   iv. Disclosure inventors who attempt to get more rights than allowed by Patent law - attempts to “game”
                        system

            E.   What is a Patent
                     i. A document It’s issued to ( individual )inventors by govnt
                    ii. Issued to inventor only after examination by USPTO [division of dept of commerce] to determine
                        compliance with legal requirements for patentability




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           F.   Patent rights
                       i. Once a patent issues it gives the inventor the right to exclude all others from practicing the claimed
                          subject matter in the US during the Patents terms
                               1. Limited: 18 months after application if filed, patent is published for public view
           G.   Litigation and Patent cases
                       i. Patent cases are either disputed in the patent office or patent disputes are litigated in courts
                      ii. Federal courts have exclusive jurdx over patent infringement cases
                     iii. All appeals from the district courts and the patent office go to the federal circuit court of appeals in
                          Washington

           H. What you need to do to determine whether something is patentable
                  i. It must be statutory subject matter 101
                         1. It must be:
                                  a. manufacture or
                                           i. something that is the result of a process or the use of a machine
                                  b. machine, or
                                           i. apparatus patent that has at least 1 moving part
                                  c. process/method, or
                                           i. series of steps you go thorugh to achieve a result
                                  d. composition of matter or
                                           i. chemical patents
                                  e. an improvement on one of those things
                         2. Things that can’t be patented
                                  a. Scientific principles & mathematical discoveries Ex. value of pi
                                           i. b/c you would have too much control & could stymied research
                                  b. Laws of Nature and phenomenon ie Gravity
                                  c. However, a process that takes advantage of the principle or scientific discovery or
                                     law of nature is patentable
                                           i. ex make a machine or process that uses gravity – then you can get a patent
                                              on the machine or the patent
                                  d. by Statute can’t patent atomic weapons
                                  e. Devises that may only be used for illegal purposes will not be a recognized use
                                           i. ex slot machines- now since legalized gambling is allowed now the patent
                                              issues then
                                          ii. if something can be used for either illegal or legal purposes then it can be
                                              patented
                                  f. things that occur naturally
                                           i. compounds from newly discovered plants or animals – its always been there
                                              but they are the first ones to discover it
                                          ii. but can patent purified forms of substances that do not appear in that form
                                              in nature or methods based on substances
                                         iii. ex substance you find in nature that isn’t purified if you purify it then you
                                              can patnet it or if you come up with patnet to use the substances – the
                                              process is your invention & isn’t naturally occurring in nature
                                  g. a method that is purely metal
                         3. 3 Problem areas
                                  a. Biotechnology Patents
                                           i. Form of life in not patentable – so the living thing itself
                                                   1. Claims to modified bacterium itself so that it could break down the
                                                       oil
                                          ii. However if what you are trying to patent does not occur naturally it may
                                              qualify as a manufacture & thus is a statutory subject matter
                                                   1. Claims to methods of preparing bacterium with 2 plasmids capable
                                                       of degrading hydrocarbons
                                                   2. Claims to use of bacterium in an inoculum ( something to store
                                                       bacteria in) to combat oil spills

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                                    b.   Computer Patents
                                             i. Pure algorithms were not patentable
                                                    1. however if the algorithm is used to transform or reduce a thing to a
                                                          different state it is patentable
                                             ii. Mathematical formula like a law of nature is not patentable subject matter
                                                 however something doesn’t become unpatentable just because its based on a
                                                 mathematical formula
                                            iii. If you could show that algorithm has a practical application ie a useful,
                                                 concrete or tangible result , then it is patentable
                                             iv. Something that would otherwise be patentable, doesn’t become un-
                                                 patentable if a computer is used as part of the process, must see how the
                                                 computer technology is used
                                             v. Using a computer to change financial data in memory is a useful, concrete or
                                                 tangible result – so its patentable

                                    c.   Business Method Patents
                                             i.   Whether something also forms the basis of a bus & generates revenue ie is
                                                  a business method doesn’t have any bearing in patentability what matters is
                                                  if it fits into one of the categories of statutory subject matter

                  ii. Utility 101
                          1. In order to get a patent the invention you are trying to protect must be Useful ( some
                             usefulness of the technology)
                          2. Low standard in meeting this requirement
                                 a. doesn’t have to work all the time
                                 b. doesn’t have to be more efficient or better yield
                                 c. doesn’t have to be better than competing technologies
                                 d. Don’t have to show invention is an improvement from another ways of accomplishing
                                     the same thing
                          3. 3 Things to show utility
                                 a. Utility must be credible – certain proportion of people who are knowledge in that
                                     field would accept your assertion as true
                                 b. It must have specific utility – the benefit has to do something with the technical
                                     features of the claimed invention
                                 c. It has to have a substantial utility ie a real world use

                          4.   Utility problems
                                    a. there is some flaw so that its inoperative – if it turns out you left something
                                        important out of the appl
                                              i. then your invention would lack utility since as described it would work and
                                             ii. if it doesn’t work then you don’t have an enabling disclosure – b/c someone
                                                 wouldn’t be able to make use of it

                          5.   In Re Schwartz – filed appl for cold fusion , he claimed it worked & had data to prove it ,
                               court held that in order to demonstrate utility you must at least show that your invention
                               accomplishes 3 things
                                   a. when you file your app there must be some assertion that your invention is useful
                                       either state it specifically or implied by the way u describe your invention
                                   b. If the patent office has a basis for challenging utility they can reject your app – so
                                       burden is on applicant to demonstrate utility




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                  iii. Novelty 102 (b) (d)( e)
                          1. Generally To protect something as patentable it must be the case that patentability isn’t
                               barred by one of the sections of 102
                                              i. each section describes a situation where the invention is anticipated by some
                                                 prior disclosure of the same invention and thus bared from protection
                                   b. Must figure out when the critical date is
                                              i. (a) (e) it’s the earliest date that the inventor is credited
                                             ii. (b) critical date is one year prior to the filing date
                                   c. you are only concerned with prior art, reference that came before those dates listed
                                       above
                                              i. these reference can prevent invention if its describe in one of the sections
                                                 of 102and
                                             ii. if its publicly accessible and
                                            iii. it must be something that in one single reference or document or use
                                                 discloses every requirement of the invention
                                                      1. ex invention has 4 requirement a single prior art reference must
                                                            disclose all 4 requirements
                                   d. (e) once US patent app is published it retroactively has affect of having been
                                       available back when it was filed
                          2. What results in an Invention
                                   a. Once there is conception of the invention it must be reduced to practice before
                                       invention exists
                                             i. Inventors- group of people who collective have the conception
                                                      1. If each person contributed some part of the fully formed idea then
                                                            they become an inventor
                                                      2. Inventors are determined by - Who does the mental work behind
                                                            the invention
                                             ii. Conception: Mental act: formation in the mind of the inventor of the
                                                 complete and operative invention
                                            iii. Reduction to practice: occurs when someone does some physical act which
                                                 demonstrates to the inventor that the idea works as conceived – it works as
                                                 intended
                                   b. 2 main ways to reduce invention to practice
                                             i. Actual reduction to practice – [physically demonstrating that it works]
                                                      1. such as do demo, experiment, computer simulation, building of
                                                            prototype & testing
                                            ii. Constructive reduction to practice – the filing of a patent application that
                                                 contains an enabling description of the invention
                                   c. Priority date – date you get credit for the invention is measured by when you
                                       reduced the invention to practice
                                              i. When 2 patent applications are filed on the same date – the one who can
                                                 establish priority gets the patent
                          3. Statutory Bars
                                   a. 102(b) A person will be entitled to a patent unless the invention was published in a
                                       printed publication in the US or foreign country more than a year prior to publication
                                       in the US
                                              i. Test: go back 1 year from the date of the application – any references that
                                                 came before that filing date can prevent patentee from getting a patent
                  iv. Obviousness
                          1. Generally: cant get a patent even if its novel , if the diff between it and what is know would
                               be obvious to someone in the school of art
                                   a. id the prior art & diff between the prior art and the invention
                                   b. look at secondary consideration so unobviousness
                                              i. commercial success
                                             ii. initial skepticisms followed by a claim
                                   c. Most common reason why patent isn’t granted obviousness

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                          2. How courts determine whether invention is obvious:
                                a. First must identify prior art
                                          i. Reference before being prior art it must be a reference under 102(a)(b) (e)
                                             or (g)
                                                  1. something can only be considered part of the 103 test ; to compare
                                                      the invention under 103 if it’s a reference also available under
                                                      section 102
                                         ii. Analogous references – 2 things which makes it analogous
                                                  1. if its in the sane technical field as the invention or
                                                  2. if its not in the same field, it’s a reference that the inventor would
                                                      use to address a specific problem in order to make the invention
                                        iii. Combine reference [unlike 102]
                                                  1. Before examiner would have to ID some specific teaching that
                                                      would have motivated someone to combine the reference
                                                  2. Now the examiner can combine reference if they were invented w/I
                                                      the degree of creativity that someone would have in the field
                                b. Identify the level of skill of the prior art
                                          i. must Id what is the level of ordinary skill to the art that the invention
                                             pertains b/c if dealing with a tech where the level of skill is lower then you
                                             don’t need a great advance over the prior art to
                                c. Identify the difference btw the prior art & the invention
                                d. Determine if that difference is obvious
                                          i. must determine whether the invention as a whole is obvious
                                         ii. determined at the time of invention
                                        iii. determine whether it was obvious based on PHOSITA – a person having
                                             ordinary skill in the art – hypo test – must determined whether it w/h/b
                                             obvious to a hypo person
                                                  1. this PHOSITA knows of everything that is available as a reference
                                                      under 102 (a)(b)(g) & (e) and is analogous
                                                  2. so the person would have considered it obvious at the time of
                                                      invention then its obvious under 103
                                e. Must look at secondary evidence – Objective Indicia of non obviousness
                                          i. if there are actual facts indicating whether or not invention was obvious
                                             should take into account
                                                  1. area of secondary evidence
                                                           a. commercial success
                                                           b. initial skepticism
                                                           c. long felt need – if you can show that other people had tried
                                                                to come up with something to address the need and failed ,
                                                                it indicates that it wasn’t obvious

                          3. Obvious 103(a) you cant get a patent even though your invention is not identically disclosed in
                             a reference in 102, if the difference btw the SM sought to be patented & the prior art are
                             such that the SM as a whole would have been obvious at the time the invention was made to a
                             person having ordinary skill in the art to which said SMJ pertains
                                 a. patentability must not be negated by the manner in which the invention was made
                                 b. Reference that blocks patentability : requirements
                                           i. Reference that is prior to the critical date is a prior art , anything after
                                              that we won’t worry about
                                          ii. The Reference must be the right kind – it must meet the requirements of
                                              102(b) it must be printed or public ……..
                                         iii. It has to disclose the same subject matter
                                                   1. a reference that is prior art & meets 102 requirement it blocks
                                                        patentability if it expressly discloses the same subject matter that
                                                        is seeking to be patented – it could have additional elements but at
                                                        least it must disclose that which is being patented

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                                          iv. Note; the other acts ie references can be by anyone including the inventors
                                               other acts
                                 c.    What is the date of reference under 102(b)
                                           i. The date of the reference is the date it becomes publicly available
                                                   1. ex reference is in Newsweek magazine – the date of the reference
                                                       of the magazine is the date when the post office becomes
                                                       distributing it to the public not when you get it nor the date on the
                                                       mag
                                          ii. Offer for sale – if you have an invention & then you begin selling it & if you
                                               wait more than a year after that sale to file your app – then that sale
                                               becomes a reference that can block the patent – so your activity by itself
                                               w/prevent you trying to get a patent
                                                   1. What constitutes offer for sale –
                                                            a. If you sell your patented product
                                                            b. What you can’t sell is an example of your invention – this
                                                                will constitute a sale
                                                            c. Its not a sale if you sell an interest in your patent
                                                   2. In order to have an offer for sale you: it must be reduced to
                                                       practice or it is ready for patenting and must have a commercial
                                                       offer for sale
                                                            a. Ready for patenting means although you haven’t reduced it
                                                                to practice but have worked out all the details in order to
                                                                file a patent application
                                                            b. So if you had drawings in order to enable someone in the
                                                                art to use it then it was equivalent to ready for patenting
                                         iii. Commercial offer for sale means what would be a valid offer in a commercial
                                               context under the UCC
                                                   1. If its enforceable under the UCC – ie an offer which if accepted
                                                       creates a binding obligation to the seller, Must have price, Q at
                                                       least then it qualifies as an offer under 102(b)
                                         iv. Public use or sale in the Use could be problematic
                                                   1. if its being used in its natural way w/ no control by inventor then it’s
                                                       a public use
                                                   2. if inventor requires confidentiality ie he controls it then its not
                                                       public use
                                                   3. He invents corset wires that is worn under garments so no one can
                                                       see it – was it enough public use to prevent patentability?
                                                   4. It doesn’t matter how isolated the use is – even one person it in one
                                                       occasion it’s a public use thus it will prevent patentability – so even
                                                       if no one else knows that its being used – its still a public use
                                          v. Experimental Use
                                                   1. Some uses even if public don’t become references if the use was
                                                       part of the actual reduction to practice of the invention
                                                   2. Experimental use - Purpose is to allow inventor to have some
                                                       reasonable public use to see if it works before filing a patent
                                                       however inventor must have intended it to be used for
                                                       experimentation & the use can only last until the inventor has it
                                                       reduced to practice
                                                            a. once he knows it works its no longer an experimental use
                                                                it’s a public use
                                                   3. However note that Inventor must have sufficient control on the
                                                       experimental analysis
                                                   4. Sometimes there can be a use where the inventor receives some
                                                       compensation – so long its incidental it still counts as an
                                                       experimental use



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                                                    5. Experiment must be directed to see if it works not to determine
                                                         whether there is a market for it ie any commercial data
                                                    6. City of Elizabeth Invention was a new pavement design, to test it he
                                                          paved a new part of toll road & he observed it for years – even
                                                          though it was public & went on for a long period of time & people
                                                          were paid to take adv of the invention – the primary purpose was
                                                          experimental & he did collect data for experimentation & money
                                                          collected was incidental
                                            vi. Apply anywhere in the world
                                                     1. Printed Publication – normally it’s a journal article or paper that is
                                                          published
                                                               a. its any visual disclosure of information \
                                                               b. it must be in visual form; doesn’t have to be physically
                                                                   printed
                                                               c. TO qualify as Printed Publication : Klopfenstein
                                                                         i. Totality of circumstances where court looks at the
                                                                            nature of the info, how it was disclosed for how
                                                                            long and to who
                                                                        ii. If its info that’s disclosed in lecture time, long
                                                                            enough to people who can copy it then it could
                                                                            constitute a printed publication
                                                                       iii. The key is that its publicly accessible &
                                                                            communication that discloses the info to the public
                                                     2. Patent – if there is patent that is available : published or open for
                                                          inspection & anywhere in the world that discloses your invention
                                                          prior to your critical date , it will be statutorily barred
                          4.   102(a) A person is entitled to a patent unless an invention was publicly known or used b y
                               others in this country or patented or described in a printed publication in this or foreign
                               contury, before the invention by applicant for the patent

                                   a. a person is entitled to a patent unless the invention was known or used
                                            i. critical date here is different than by 102(b) which is set 1 yr prior to filing
                                               date, so any publication or patent or offers for sale that became prior to
                                               that critical date would be barred from patent
                                           ii. under (a) the critical date is the invention date
                                   b. 102(a) Prior art is prior to the date that the inventor had possession of the invention
                                   c. Reference that can prevent patentability under 102(a)
                                            i. If it can be shown that that same SM was publicly known or used by others
                                               in this country prior to the critical date
                                   d. Rosaire
                                            i. Patent filed for drilling for oil & was rejected b/c other co Gulf had
                                               exterminated & used that tech before the Patentees invention date
                                           ii. Issue: Does this use constitute public knowledge or use?
                                          iii. If gulf had used it secretly/confidentially then it wouldn’t qualify as public
                                               use under 102(a)
                                                    1. here they didn’t take any steps to protect confidentiality in the
                                                         normal use , so held it was public use
                                                    2. If the use is experimental & person who conducts the use and
                                                         abandons it a unsuccessful exp then it doesn’t count as public use
                                                    3. Here Gulf had conducted the exp then decided not to use it
                                                         anymore
                                                    4. Patentee argued that the use was unsuccessful experiment & thus
                                                         didn’t qualify under 102(a)
                                          iv. Held: Gulf had discontinued for business reason not whether it worked or
                                               not



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                          5. 102(e) A person is entitled to a patent unless the invention was described in
                                           i. An app for patent published under sec 122
                                          ii. By another
                                 b. Reference under 102(e) : if before conception of invention someone filed patent
                                     app in the US that disclosed but didn’t claim the very same thing, if this earlier app
                                     disclosed & claimed the invention as X’s app, then can determined who had priority
                                 c. Under E - someone is claiming some aspect of it, they have disclosed the others
                                     invention in their invention app – so its not the case where determining priority dates
                                 d. The application field in the US are kept secret for 18 mths then published after
                                     18mths or if it publishes at the end when patent is issued
                                           i. So this document become a reference
                                          ii. Its given credit as being publicly available as its og filing date
                                 e. Under 102(e) a patent app becomes reference upon publication of filing date
                                           i. Critical date here is the invention date
                          6. 102(g) Provision that determines who gets a patent: who has priority when 2 inventors
                             make the same invention
                                 a. 102(g)(1) if 2 pending appls filed by different inventors for the same subject matter,
                                     the patent office can force parties to litigate to determine who has priority – Called
                                       Interference
                                           i. Its admin procedure taking place at the patent office
                                  b. 102(g)(2) Priority in the novelty or prior art section
                                  c. Fujikawa
                                          i. Fuj files patent app shows Aug 20, 1987 date he filed his US app which
                                               counts as constructive RTP ( he has to rely on this date b/c he reduced to
                                               practice outside the US )
                                           ii. Note: in 1993 US joined NAFTA - & app in the US could rely on acts in Mex
                                               or Canada to establish invention dates
                                          iii. Note: in 1995 US modified the patent act to conform to the world trade
                                               org’s treaties dealing with convention on Patents – so can rely on conduct in
                                               any country that is member of WTO TRIPS
                                 d. Wattan – worked on the invention from 1979- 85 then stopped working on it for a
                                      few years & began working on it in 1/87 & worked on it until he had an actual
                                      reduction to practice in 10/87 then filed app 17 mths later
                                            i. W was credited for having invention – def by time he field his app
                                               (constructive)
                                           ii. However since the US is first to invent - W must show that he actually
                                               reduced to practice either 10/87 or before F’s filing date
                                          iii. Under 102 (g) you are credited for invention as of date of reduction to
                                               practice or if that date was preceded by a period of time where you were
                                               diligently working to reduce to practice before the date of reduction of
                                               practice the can move the date to period of the diligence ie 1/87
                                          iv. however diligence is difficult to establish must show that
                                                    1. every day you were working you were working on that project
                                 e. How to prove diligence after the fact:
                                            i. you can’t rely on the inventors own testimony b/c it unreliable
                                           ii. the only way to establish it is through documentation
                                 f. so long as W can show diligence at least one day of F’s earliest invention date date ,
                                      he can show actual reduction as shown by diligence
                                            i. however he can’t show that he had possession of the intention prior to that
                                               date b/c he wasn’t working on the project for 2 years
                          7. Other Issue: Even if you have priority of invention you can lose it if you abandon, suppress or
                             conceal the invention
                                 a. so by waiting 17 mths – this is considered concealment
                                            i. Example
                                                    1. F-----------------C – ARTP
                                                    2. W____C_________________RTP_______files

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                                            ii. so W couldn’t show that he was entitled to invention date before F”s ARTP,
                                               in order to move his date before F’s ARTP he would have to show diligence
                                               before that date – so
                          8. Deadlines : Even though there is no deadline for filing, there is a statutory bar if you wait
                              12mths to file
                                  a. There is no obligation that once you have RTP in order to get your patent filed
                                      however you can’t abandon, suppress or conceal the invention
                          9. The US is the only country in the world to establish which of two inventors have priority
                              by using the invention date and not the application date
                          10. 102(f) can’t get a patent on an invention if you didn’t invent what is claimed
                                  a. so individual or group can’t claim invention if they are not the people who contributed
                                      to the invention



                  v. Adequate Disclosure 112
                          1.   Enablement
                                   a. Determined on a claim by claim basis , its an objective standard
                                   b. Patent app is enabling if at the time it was filed if it contains enough info that a
                                      person skilled in the art could make & use the invention based on the patent app w/o
                                      undue experimentation
                                           i. The level info you must provide depends on the technology – ie objective –
                                              someone who has ordinary skill in the art
                                          ii. Not necessary to include every single detail about the tech such as
                                              blueprints or production
                                   c. Undue Experimentation – if in a course of a few days person skilled in the field could
                                      experiment and practice the invention – however if it took months then it would be
                                      undue or if they had to make other inventions to make it work
                                           i. Factors of Undue Experimentation
                                                   1. How much experimentation is needed
                                                   2. Amt of direction presented
                                                   3. Presence or absences of working examples
                                                   4. Nature of the invention
                                                   5. State of the prior art
                                                   6. Relative skill of those in the art
                                                   7. Predictability of the art
                                                   8. Breadth of the claims

                          2.   Written description
                                  a. Inventor can only get a patent covering a claim if his application ( as a whole) would
                                       convey to someone skilled in that art that at the time he filed his application he
                                       actually had possession of the invention in that claim
                                  b. Morse case - Inventor of the telegraph. Among his claims of the mechanism of the
                                       telegraphs he also had a broad claim : “exclusive right to every improvement where
                                       power is electric current. “
                                            i. Held he had claimed more than he actually invented.
                                   c.   how to determine how broad the inventors claim should be?
                                             i. R: can’t have a claim that is broader than what you have invented, scope of
                                                claim m/gel w/ specifications
                                            ii. You can only obtain a patent over what you have actually invented so you
                                                can’t have protection over things you didn’t conceive of because of the broad
                                                description
                          3.   Best mode
                                   a. Standard is both objective and subjective standard
                                           i. Subjective -= what the inventor thought was the best mode
                                          ii. Objective – if the inventor knew of the best mode it must be disclosed in a
                                              way that objective …..,

Copyright 2010. All rights reserved.                                                                                      11
                                       b. Rule: in addition to making enabling disclosure inventor must also disclose in an
                                            enabling way the way to practice the invention that you consider to be the best at
                                            the time you submit the application

                                       c.Two part test: If the inventor had a preferred way of practicing the invention, they
                                         have to provide an enabling disclosure of that mode in enough detail so that someone
                                         in the ordinary art could practice the technology
                                               i. If there is no best mode then just file one mode & this will suffice
                                                       1. There is not duty to update the best mode after app h/b filed or if
                                                            you later find a best mode to disclose it
                                   d. Even if claim is approved but you don’t disclose the preferred method, the claim
                                         won’t be valid, so inventor won’t be able to enforce it against someone else
  III. What rights does patent give patentee & how he enforces it
          a. Patent doesn’t confirm affirmative fright to do anything, but it gives him right to prevent others from
              practicing that patent – right to exclude others from practicing what is claimed in the patent for the term of
              the patent in the US - from issuance to the term when it expires
          b. Scope of right to exclude is defined by the patent
          c. If patentee is interested in protecting of enforcing rights , they can bring an infringement action

   II. Paten Infringement
           a. Can infringe patent in 6 ways

            b.   Any infringement can be either
                      i. Literal infringement – what the infringer is doing is literally falls w/I at least one claim of the patent
                          [ note patents may have many claims] , each individual claim represents a different patent right , so
                          you infringe a patent even if what you are doing is infringing one of the claims of the patent

                     ii. Doctrine of Equivalents- as a matter of equity you are liable for infringement even though what you
                         are doing is literally different



            c.   3 types of activity that can cause someone to be liable for infringement under 271 (a) &(b) & (c )
                      i. Direct infringement- D itself is doing the acts constituting infringement

                     ii. Contributory infringement - D hasn’t physically done infringement acts but you have caused them to
                         happen , either induced someone else to do it or given them the means to directly infringe the patent
                         claim

                     iii. Active inducement - D hasn’t physically done infringement acts but you have caused them to happen ,
                          either induced someone else to do it or given them the means to directly infringe the patent claim



  III. Nature of Patent litigation
          a. Lawsuit for patent infringement must be filed in US DC. Patent Savvy districts:
                    i. D Del – can sue anyone there
                   ii. ND Cal- only district that has separate rules on procedures covering patent cases
                  iii. ND Ill
                  iv. SD NY
                   v. ED Tex – hottest place to file patent infringement matters

  IV. Patent Litigation costs
          a. How much to litigate patent infringement action –
                    i. Up until trial each side will spend 4.5 mil dollars in litigation cost , this doesn’t include trial or appeal
                   ii. Don’t settle often



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   V. Jurisdiction & Venue
          a. Exclusive Federal SMJ over patents- any COA arising out of the patent act there is exclusive juridx in the US
              courts under 28 USC 2201

           b.   If there is a genuine dispute as to whether or not a patent if valid or isn’t infringed can bring action in
                declaratory action that you didn’t infringe or that patent is valid

           c.   Whether it starts out as Declaratory action or Regular action 2 step analysis
                    i. Step 1: Court needs to construe the claims of the patent
                            1. the patent only excludes the D from practicing the SM that is covered by the claim
                            2. court rules on what the claims means and cover
                            3.
                   ii. Step 2: court then determines whether those claims cover whatever the D is doing
                            1. in most cases this step is not in dispute

  VI. Claims are different depending on the type of invention they cover
          a. Example of Machine Claim
                   i. Elements = Limitations exclude other products that don’t include that feature

           b. Example Process Claim
                    i. For a process patent the claim doesn’t include structural limitations it includes steps, it’s a recipe for
                       carrying out a process or the steps
                            1. so each step is a limitation
                            2. to infringe patent – must carry out each of the steps of the process
                                     a. so if you do all & include additional steps – still infringe
                                     b. if you do all but one- not infringement
 VII. Claim Construction
          a. Markman v. Westview
                    i. Issue: Whether entitled to jury trial in infringement case
                   ii. Holding: Yes, 7th amended preserve jury trial in those cases since they used to do so in England ;
                       however the role of the judge in patent case is different than civil case
                            1. Judge is responsible for interpreting what the patent means
                            2. jury is can find facts ie what is the temp of process… , however it’s the judges role to read &
                                interpreted it and include in jury instruction info for jury to decide upon – so judge
                                determines whose interpretation of the patent ie the D’s or P’s that the jury will deliberate
                                on
                            3. Case established a procedure for the judge to make determinations as to what the claims
                                mean
          b. Phillips v. AWH
                    i. Courts took case to determine how judges would construe patent claims
                   ii. Facts: Case involved a wall panel to construct prisons, btw the inner & outer wall there are patricians
                       called “Baffles” – this wall prevents bullets from going through the wall
                            1. D claimed that it’s product didn’t include a Baffle even though it did include inner and outer
                                wall
                  iii. Issue: What is a Baffle? Is it limited to patrician that is angled ( as was the inventors) or does it
                       include straight ones also (as the D’s model had)
                  iv. Holding: Court should look at the following factors in this order to see what something means:
                            1. Looking for the terms Customary & usual meaning
                                     a. If a term has a meaning that is used in the art as a customary or usual meaning , that
                                         is what the meaning should be used
                            2. Clues that court should look to determine what customary & usual is
                                     a. Courts could ask experts or look at dictionaries
                            3. Court should look at the language of the claim & determine how its used in the claim – to see
                                if there is a special meaning
                            4. look at the specification – the written description of what the invention is



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                             5.  look at the prosecution history, the admin record of what happened during exam that
                                 resulted in the patent , b/c examiner & patentee would have determined what a terms means
                     v. Once it goes through this process ,
                           1. Intrinsic evidence – evidence that would be available ot the public
                           2. Extrinsic evidence – not publicly available of what the patent covered
                                     a. What the patentees product consisted of

VIII. Doctrine of Equivalence – Patentee shouldn’t be prevented from keeping someone from competing against them if that
      person makes minor changes to the description of the patent
          a. Something is equivalence & thus infringes if it performs sub the same function in sub the same way to
              achieve substantially the same result

           b.   Not Available Doctrine of Equivalence is not available if the patentee is stopped from something that
                happened during patent prosecution
                     i. So if patentee amended claims during prosecution & could have made the claims read literally to the
                        D’s accused products then its estopped in most cases from relying on Doc of Equivalence

           c.   2 situations where Doctrine of Equivalence is used
                      i. When weren’t amended or
                     ii. it wasn’t foreseeable that the D’s would have used their variant

  IX. Whether what the D is doing is act of Infringement
         a. First construe claims to see if claims cover D’s product
         b. To infringe what the D is doing must fall w/I one of the categories of 271 see pg 874
                  i. Simple possession is not an act of infringement
                 ii. Infringement occurs when

           c.   271 (a) Direct infringement under - No intent requirement for patent infringement , no need to violate duty
                of law or improper means – it’s a Strict liability offense
                       i. Whoever w/o authority makes, uses, offers to sell or sells any patented invention , w/I the US or
                          imports into the US any patented invention during the term of the patent therefore infringes the
                          patent
                      ii. Very small exception as to fair or diminemus type infringement
                     iii. Note: If method is used as amusement, philosophical then its not infringement

           d.   271 (b) Indirect Infringement – aiding & abetting liability
                     i. if you cause or induce someone else to directly infringe patent then you can be liable as an active
                        inducer under 271(b)

           e.   271 (c ) Contributory Infringement
                     i. you are liable indirectly for the direct infringement of another if you
                            1. supply component of the manufacture, machine, …. That is a material part of the invention and
                                 its not a staple article or commodity that is suitable for substantial non- infringing use – liable
                                 for contributory negligence

   X. Defenses that D can raise in an Infringement action
         a. 3 main defenses
                  i. Invalidity of patent [most common defense] – can be based on any of the patentability
                         1. it lacks novelty
                         2. its anticipated
                         3. obvious
                         4. lacks utility
                         5. not patentable SM
                         6. not enabled because some issue with disclosure
                         7. Note: To establish invalidity D must show that it’s invalid by Clear and Convincing evidence
                              b/c when patent office issues patent there is presumption that patent is valid

Copyright 2010. All rights reserved.                                                                                             14
                    ii. Unenforceability – Patent is valid but the patentee should be allowed to enforce it because they
                        cheated during the examination process which is an ex parte process ie it’s the patent officer and the
                        patentee,
                            1. Patentee has duty to disclose any material information, if it turns out after the fact that
                                applicant failed to disclose material info with intent to deceive the patent office then that
                                results in inequitable conduct & the result is that the patent is forever invalid
                                     a. Material info
                                     b. Withheld or falsely submitted and
                                     c. Intent to deceive
                                               i. The more material the info is then even if you had a little intent to deceive
                                                  or reckless then that’s enough to constitute inequitable conduct

                    iii. Misuse – arises when you have a patent and you try to leverage it give you more control in the market
                         that patent act would allow you to – to extend the exclusivity to areas that you aren’t entitled to
                             1. common area of misuse is tying

  XI. Remedies that successful Patentee can receive
         a. If patentee is able to avoid those defense what si the relief the patentee can get
                  i. Injunction – can get for remaining terms of the patent ie 20 years from the filing date of the
                     application
                          1. Injunction is keyed to the term of the patent
                            2.   eBay v. Merc Exchange
                                     a.   claimed to have patent on “buy it Now” feature
                                     b.   E- bay claimed this is such a small part of business that they shouldn’t get a perm
                                          injunction allowed to pay damages as they go along in using it. Court agreed & stated
                                          the following:
                            3.   To get injunction in patent case must show the standard for equitable factors to get
                                 injunction
                                      a. Irreparable harm
                                      b. Lack of remedies
                                      c. Balancing of equities
                                      d. Public interest
                            4.   Only if court goes through the 4 factors & determines that injunction is warranted then you
                                 get permanent injunction

 XII. Damages can be based on one of two measured
         a. Lost profits – profits that the patentee would have recognized if the infringement hadn’t taken place
                  i. Project how many units would have sold and for how long and then state your damages as this – this
                     requires expert testimony

           b.   Reasonable Royalty – if you can’t get lost profits is this; ie the minimum damages you can get as patentee is
                what the parties would have agreed to as a reasonable royalty rate




Copyright 2010. All rights reserved.                                                                                            15

				
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