Patent Law – Outline

1、Patent Law Golden Fall 2004I. Patentability/Validity1A.Patentable Subject Matter1B.Utility2C.Novelty4D.Priority7E.Nonobviousness9F.Statutory Bars11G.Disclosure & Enablement13II. Infringement14A.Claim Construction14B.Literal Infringement16C.Doctrine of Equivalents & Prosecution History Estopp

2、el17D.Indirect Infringement20E.Remedies21III. Policy22A.Global Differences22I. Patentability/ValidityA. Patentable Subject Matter1) Statutes:§101. Inventions Patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and usefu

3、l improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.§100. Definitions: When used in this title unless the context otherwise indicates(a) “Invention” means invention or discovery(b) “Process” means process, art or method, and includes a

4、new use of a known process, machine, manufacture, composition of matter, or material2) Evidentiary Standard:a) Question of law3) Doctrine:a) “Anything under the sun that is made by man” is patentable BUT NOT “l(fā)aws of nature, physical phenomena, and abstract ideas” Diamond v. CHAKRABARTY (U.S. 1980),

5、 CB p. 66-77:i) The inquiry should focus on “the essential characteristics of the subject matter, in particular, its practical utility” STATE STREET Bank & Trust Co. v. Signature Financial Group, Inc. (Fed. Cir. 1998), CB p. 156-165ii) Living things:(1) Patentable IF made my man e.g., geneticall

6、y engineered micro-organism Diamond v. CHAKRABARTY (U.S. 1980), CB p. 66-77, Oncomouse (U.S. only) Harvard/ONCOMOUSE, CB p. 129-30 n. 5 UNLESS a human being or human-animal hybrid (“chimera”)(2) NOT patentable otherwiseiii) Substances found in nature:(1) Patentable IF not in naturally occurring form

7、 e.g., salt purified from naturally-occurring adrenaline PARKE-DAVIS v. H.K. Mulford & Co. (L. Hand, 1911), CB p. 97-104, DNA sequence BUT NOT if merely a mixture of naturally occurring things with no change in properties e.g., mixture of naturally occurring bacteria FUNK BROS. Seed Co. v. Kalo

8、Inoculant Co. (U.S. 1948), CB p. 104-108(2) NOT patentable otherwise e.g., a newly discovered mineral found in the ground, a new plant found in the wild Diamond v. CHAKRABARTY (U.S. 1980), CB p. 66-77iv) Mathematical processes:(1) Patentable IF applied in a useful way, i.e., used in conjunction with

9、 a structure or process which, as a whole, performs a function that the patent laws are designed to protect (e.g., transforming an article to a different state or thing) Diamond v. DIEHR (U.S. 1981), CB p. 142-52 e.g., process for curing rubber Diamond v. DIEHR (U.S. 1981), CB p. 142-52, computer da

10、ta processing system for financial services STATE STREET Bank & Trust Co. v. Signature Financial Group, Inc. (Fed. Cir. 1998), CB p. 156-165(a) Focus is on “the essential characteristics of the subject matter, in particular, its practical utility” STATE STREET Bank & Trust Co. v. Signature F

11、inancial Group, Inc. (Fed. Cir. 1998), CB p. 156-165(2) NOT patentable otherwise e.g., any application of electromagnetism at a distance OReilly v. MORSE (U.S. 1854), CB p. 78-84, all uses of a mathematical algorithm (process) Gottschalk v. BENSON (U.S. 1972), CB p. 132-38(a) BUT law for algorithms

12、may be changing (see CB p. 164-65)v) Processes in general:(1) “Transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines” Gottschalk v. BENSON (U.S. 1972), CB p. 132-38B. Utility1) Statutes:&

13、#167;101. Inventions Patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.§112 ¶ 1. Specificati

14、on: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use

15、the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.2) Evidentiary Standard:a) It is presumed that the invention has its asserted utilityi) PTO may be rebut by providing evidence that one of ordinary skill in the art would reasonably doubt the asser

16、ted utility. THEN burden shifts to applicant to provide rebuttal evidence. In re BRANA (Fed. Cir. 1995), CB p. 238-50b) §101 utility is a question of factc) §112 utility is a question of law (since enablement is a question of law), reviewed de novo3) Timing:a) Utility is measured at the ti

17、me of invention.4) Doctrine:a) “The threshold of utility is not high: an invention is useful under §101 if it is capable of providing some identifiable benefit.” JUICY WHIP, Inc. v. Orange Bang, Inc. (Fed Cir. 1999), CB p. 219-24b) Finding infringement of otherwise valid claims mandates a findi

18、ng of utility under § 101 RAYTHEON Co. v. Roper Corp. (Fed. Cir. 1983), CB p. 246 n. 3i) BUT infringement can occur only after the patent has issued (while utility is measured at time of invention)c) 3 Requirements of Utility:i) Operability: whether the invention does what it is alleged to do (

19、i.e., does it “work”?)(1) Presumption of operability usually overcome only in cases of impossible/fantastic or clearly mistaken claims (e.g., perpetual motion machine)(2) Not much of a barrier: inventors usually dont apply for a patent if they arent convinced of their inventions operabilityii) Benef

20、icial Utility: does invention do something good or is it substantially detrimental to society?(1) In the past was used to exclude (e.g., gambling machines), BUT now has questionable status:(a) Patent law isnt aimed at deciding whats morally “good” or what is going to be deceptive to consumers as opp

21、osed to promoting consumer welfare that function is designated to other agencies JUICY WHIP, Inc. v. Orange Bang, Inc. (Fed Cir. 1999), CB p. 219-24(b) Allowing regulation through patent might be a preemption of state police power (converse of Bonito Boats)(c) Congress is free to declare certain typ

22、es of inventions unpatentable for a variety of reasons, including deceptiveness (but PTO/courts are not the proper institutions to make such judgments)(2) BUT unlawful inventions (e.g., a letter bomb) still may NOT be patentableiii) Specific, Substantial Utility (a.k.a. “Practical Utility”): whether

23、 invention meets some real, substantive threshold for being useful(1) Asserted utility MUST be:(a) Specific: specific in some way to the invention(i) General utility (i.e., utility applicable to the broad class of the invention) does NOT count 2001 PTO Guidelines, CB p. 248-49 n. 6(b) Substantial: d

24、efines a “real world” use(i) Utilities that require or constitute carrying out further research to identify or confirm a “real world” use do NOT count 2001 PTO Guidelines, CB p. 249 n. 6 *includes list of examples1. BUT can obtain a patent on medicines that have worked for lab animals but havent yet

25、 been tested on humans In re BRANA (Fed. Cir. 1995), CB p. 238-50(c) Credible: asserted utility would be considered credible by a person of ordinary skill in the art (may consider extrinsic evidence) 1995 PTO Guidelines, CB p. 247 n. 5(2) “Throw-away” utilities, such as filling a landfill, do NOT co

26、unt (3) NOR do future/hypothetical uses BRENNER v. Manson (U.S. 1966), CB p. 229-37(a) “A patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion” BRENNER v. Manson (U.S. 1966), CB p. 229-37 dont want to block out an area of basic research(b

27、) The basic quid pro quo contemplated for granting a patent monopoly is the benefit derived by the public from an invention with substantial utilityd) CANNOT patent the process for creating a useless invention BRENNER v. Manson (U.S. 1966), CB p. 229-37C. Novelty1) Statutes:§102. Conditions for

28、 patentability; Novelty: a person shall be entitled to a patent UNLESS:(a)1 BEFORE the date of invention, the invention was A Known ORB UsedC By othersD In this country OR2 BEFORE the date invention, the invention was A Patented ORB Described in a printed publicationC Anywhere(e)OR the invention was

29、 described in an application for a patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent (OR: certain intl provisions)2) Timing:a) Novelty concerns ONLY events that occur before the time of inventioni) Critical date is the appl

30、icants date of invention3) Evidentiary Standard:a) * Issued patents ALWAYS have a presumption of validity clear and convincing evidence is required to invalidate an issued claim (EXCEPT in a reissue preceding, where presumption of validity doesnt apply)Anticipation is a question of fact (with concom

31、itantly deferential review)i) BUT “production of new prior art or other invalidating evidence NOT before the PTO eliminates, or at least reduces, the element of deference due the PTO, thereby partially, if not wholly, discharging the attackers burden” American Hoist & Derrick Co. v. Sowa & S

32、ons, Inc. (Fed. Cir. 1984), CB p. 700-01 n. 5b) Anticipation is a question of fact, with concomitantly deferential reviewc) Existence AND relevancy of prior art must be established by clear and convincing evidencei) Witness testimony MUST be corroborated IF offered alone to invalidate a patent Finni

33、gan Corp. v. ITC (Fed. Cir. 1999), CB p. 402 n. 5(1) Testimony corroborated ONLY by other testimony is highly suspect, BUT there is no per se rule against it4) Terminology:a) Reference: any item/material with information (patent, publication, device)b) Effective date: time when ref. is considered to

34、 have become part of the artc) Critical date: for novelty analysis, date of applicants inventiond) Prior art: any reference with effective date earlier than critical date5) Doctrinea) Is the reference potentially invalidating?i) “Known by others”: MUST be public knowledge, i.e., knowledge reasonably

35、 accessible to the public NATL TRACTOR PULLERS Assn v. Watkins (N.D. Ill. 1980), CB p. 398-400(1) NOT public if knowledge of only a single person OR a few persons working together(2) Prophylactic rule to eliminate litigation in cases where problems of proof are daunting, high possibility for fraud,

36、and/or effects of collateral estoppel are troubling.ii) “Used by others”: MUST be a public use(1) Examples: use of a claimed process in the “usual” course of producing articles for a commercial purpose is a public use W.L. Gore &. Assocs. v. Garlock, Inc. (Fed Cir. 1983), CB p. 405 n. 1iii) “Pri

37、nted publications”: Focus on whether nature of publication is “fitted to inform the craft” of the material disclosed JOCKMUS v. Leviton (L. Hand, 1928), CB p. 407-09(1) NOT limited to formal publications such as widely circulated newspapers or magazines JOCKMUS v. Leviton (L. Hand, 1928), CB p. 407-

38、09(2) Examples: a catalog distributed generally to a trade with only 50 copies printed, JOCKMUS v. Leviton (L. Hand, 1928), CB p. 407-09 single copy of a German thesis published and displayed in library In re Hall (Fed. Cir. 1986), CB p. 409-411 (not assigned, but may have been discussed in lecture)

39、 (Germans tend to index things well probably would NOT be sufficient in U.S. JOCKMUS v. Leviton (L. Hand, 1928), CB p. 407-09)iv) Earlier-filed U.S. patent applications as references §102(e):(1) Material disclosed BUT NOT claimed is available as prior art ONLY under §102(e) Sun Studs, Inc.

40、 v. ATA Equip. Leasing, Inc. (Fed. Cir. 1989), CB p. 425 n. 1(2) To count as prior art, patent MUST EITHER issue OR be published pursuant to §122(b)(a) Creates uncertainty: not clear whether claim will be anticipated by earlier-filed application until PTO makes a decision or until application i

41、s published(3) Effective date of earlier-filed application is the date of filing ALEXANDER MILBURN Co. v. Davis-Bournonville Co. (U.S. 1926), CB p. 423-26b) Does the reference anticipate the invention?i) Similarity to infringement analysis: “That which would literally infringe if later in time antic

42、ipates if earlier than the date of invention”ii) An invention is anticipated ONLY IF a single piece of prior art discloses each and every element of the claimed invention AND the reference must be enabling(1) Each and every element must be described EITHER In re ROBERTSON (Fed. Cir. 1999), CB p. 365

43、-70:(a) Expressly (invention really does say everything) OR(b) Inherently(i) Test for inherency:1. Invention is a necessary part of whats disclosed ANDa. (If not a necessary part, seems like you are really making an argument about obviousness) 2. Person of ordinary skill in the art would recognize t

44、hat its a necessary part(ii) “Inherency may NOT be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is NOT sufficient.”(iii) When a claim covers several compositions, the claim is anticipated if one of them is in the prior

45、 art TITANIUM METALS Corp. v. Banner (Fed. Cir. 1985), CB p. 383-871. Genus vs. Species: a prior art reference disclosing a species (e.g., “socks”) anticipates a claim to the genus (e.g., “clothing”) BUT NOT vice-versa(2) AND the reference MUST be enabling, i.e., must contain a representation of the

46、 patented improvement in such full, clear and exact terms as to enable any person skilled in the art to make/practice the invention Seymour v. Osborne (U.S. 1970), CB p. 380 n. 3 (“Must bear within its four corners adequate directions for the practice of the patent invalidated” Dewey v. Almy Chem. C

47、o. (L. Hand, 1942), CB p. 380 n. 3)(a) BUT NOT the same as §112 enablement: reference need NOT disclose the same use for the invention (so reference could work to anticipate, even if could not support the claims in question) In re HAFNER (C.C.P.A. 1969), CB p. 380-83(i) Inventors cannot obtain

48、patents on old products merely because they have discovered new uses for themD. Priority1) Statute:§102(g). Conditions for patentability; Novelty: a person shall be entitled to a patent UNLESS(1)(Applies ONLY in interferences, BUT to inventions in any WTO country) During the course of an interf

49、erence conducted under §135 or 291, another inventor involved therein establishes, to the extent permitted in §104 (WTO Country), that:a Before such persons invention thereof the invention wasb Made by such other inventor ANDc NOT abandoned, suppressed, or concealed(2)(Applies generally, B

50、UT ONLY to U.S. inventions) OR:a Before such persons invention thereof, the invention wasb Made in this country by another inventor whoc Had NOT abandoned, suppressed, or concealed it.*In determining priority of invention under this subsection, there shall be considered ONLYa The respective dates of

51、 conception and reduction to practice of the invention, ANDb 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.2) Evidentiary Standard:a) The second to file bears the burden of proof as to priority:i) IF filed befor

52、e others patent issues THEN burden is limited to a preponderance of the evidenceii) IF filed after others first patent issued THEN burden is clear and convincing evidenceb) “The mere unsupported testimony of the alleged inventor . . . cannot be received as sufficient proof . . . of prior conception”

53、 Price v. Symsek (Fed. Cir. 1993), CB p. 447 n. 2i) BUT the inventor can “swear behind” Establishing a Date of Invention: Rule 131, CB p. 501-02 the reference under Rule 131 UNLESS (1) The reference is another U.S. patent or U.S. patent application OR(2) The examiner has rejected the applicatio

54、n based on a statutory barii) An inventors notebook records, witnessed by someone else in the research department, are often determinative of priority3) Doctrine:a) The first to reduce to practice usually has priority UNLESS:i) The reduction to practice was abandoned, suppressed, or concealed ORii)

55、The second to reduce to practice was the first to think up the invention AND he exercised reasonable diligence from a time prior to the others conception through to his own reduction to practiceb) 2 ways to Reduce to Practice:i) Actual actually building a working copy of the inventionii) Constructiv

56、e filing a patent application with enabling disclosurec) Conception TOWNSEND v. Smith (C.C.P.A. 1929), CB p. 443-48:i) Formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practiceii) Priority of conceptio

57、n: when invention is made sufficiently plain to enable those skilled in the art to understand itd) Reasonable diligence:i) Lack of money is a “circumstance” that will be considered in judging diligence, but it is NOT a blanket excuse (one could always get a constructive reduction to practice by fili

58、ng a patent application) Christie v. SEYBOLD (6th Cir. 1893), CB p. 448-455e) In general, suppression or concealment MUST be deliberate or intentionali) BUT a lengthy delay between the making of the invention and the filing of a patent application can give rise to an inference of concealment PEELER v. Miller (C.C.P.A. 1976), CB p. 456-63(1) BUT the inference may be overcome by evidence that the reason for delay was to p