Mat Erik Laim

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  ( (# L Introduction a. Patent Claims i. Types of Patents 1 Utility patents 2. Plant patents 3. Design patents a. New and orn.amental designs of an object b. Term: 14 years from issue date ii Structure 1. Preamble 2. Transition a. Open: comprising : does not limit the claim to the listed lement ~; additional element ~ are included within the scope as long as the listed elements are present b. Closed: consisting 01 : Additional elements are not included within the scope of the claims c. Consisting essentially 01 limits claim to elements present plus any additional element ~ that do not make the variant essentially different from the claimed invention (often used in chemical biological art.~ 3. The Body a. Requirements for Claims i. Must be in a single sentence ii Must recite how the elements interact iii. All internal references must clearly refer back to the element referred to b. Independent Claims c. Dependent Claims i. Will remain valid even if independent claim is invalidated ii Acts as insurance policy d. Multiple Dependent Claims e. Means·PlusFunction iii. Claim Drafting i A means for performing a function ii Function must be used in combination with at ea.~t one other element iii Function must be clear in specification I. Claim as broadly as possible but not so broadly as to invalidate the patent 2. Determine what part of the invention is new; identify as little a change in the prior art so as to differentiate it from what came before b. Oveniew of the Patent System i. Patent Prosecution 1. Apply / rejection final rejection/appeal to Board 2. After appealing to Board, have two options a. Appeal to Federal Circuit, using fact.~ before the Board b. Sue Commissioner in D.C. District Court, using new or additional facts and evidence 3. Types of patent applications a. Standard application b. Request for Continued Examination (RCE)/ Continued Prosecution Application (CPA): Means to continue examination of application after tlnal rejection c. Prmisional application i. Placeholder to ensure early filing date ii Must comply with enablement requirement of § 112 iii. Have one year to me standard application i \ r ; r < i I I J i I I t f i [ ( f f & ; f I 1 I i I I ~ , t ~ r ~ l I , ã r f ~ f t [ f t t J k f    4. Patent applications maintained in confidence during application except for publication of new applications 18 months from filing ii Patent Enforcement 1. Court of Appeals for the Federal Circuit hears all appeals in patent cases including cases with issues unrelated to patents 2. Patent has presumption of validity: burden is on challenger to prove that patent is invalid iii. Patent Term c. Miscellaneous 1 After June 8, 1995: 20 years from time of iling 2. Before June 8, 1995: 17 years from issue date 3. For applications pending on the transition date or patents in term: longer of the two terms 4. Provisional rights: upon publication of a U.S. application applicant may send a copy to an infringer and obtain a reasonable royalty upon issuance of the patent 5. Can get extension if PTO takes too long to examine patent (or for certain pharmaceutical patents) i Patents unavailable for inventions dealing solely with nuclear weapons ii. Special application process for applications related to national security iii. The inventor is the ovmer of any patent issuing from the application absent a written agreement to the contrary iv. Employment Doctrines 1 Hired to invent: where inventor was hired for the specific purpose of inventing something, the employer can be deemed to have an obligation of ovmership from the employee 2. Shop right: i he employee used the employer s time and materials to make the invention, the employer has implied royalty-free license to use the invention  II. Patentable Subject Matter a. Introduction i. What May Be Patented: § 101 1. Process/Method of operation 2. Machine 3. Article of manufacture 4. Chemical composition ii. Diamond v. Chakrabarty (p. 66 : Anything under the sun made by man is patentable, including living genetically-engineered organisms b. The Bar to Patenting Laws of Nature, Physical Phenomena, and Abstract Ideas i. Historical Foundation: I. 0 Reilly v. Morse (p. 78 : The mere discovery of a scientific principle is unpatentable 2. Patenting scientific principles would hamper scientific progress, which would contradict the policies of patents 3. Telephone Cases (p.90): Manipulation of a scientific principle in a manner that does not occur in nature may be patentable (e.g. telephone calls ii. Patenting of Purified Natural Substances I Parke Da~i~ v. H.K Mulford (p.97): A purified form of a natural substance (which does not appear naturally in a purified form) may be patented 2. El parte Latimer (p.l 02): Cellular tissue extracted from pine needles was not patentable because features derived from natural qualities, not because of applicant's actions 3. Even if the substance is unpatentable, the process for extracting the substance will be patentable iii. Funk Bros. Seed v. Kalo Inoculant (p.l04): A bacteria performing its natural function without modification by the inventor is not patentable iv. J E.M. Ag. ,Supply. . Pioneer Hi-Bred (p.lll): Hybrid plants fall under § \01 in addition to Plant Patent Act c. Software Patents i. Gottschalk . . Benson (p.132): Mathematical formulas and algOlithms may not be patented ii. In re Beauregard (p.141): Printed matter exception iii. Diamond F. Diehr (p. 142): A process with a tangible result that includes a mathematical algorithm may be patented iv. In re Bernhardt (p.l 52 : A program embodied in a physical recording medium may be patented (it is phYSically different than a machine ithout the program) v. In re Alappat (p.l 53): A combination of inter-related components in an electrical device, including a method implementing a mathematical formula, is patentable vi. Demise of the Limits: State Street d. Mental Steps: Mental steps or processes which can be performed in one's head, are not patentable e. Business Method Patents, Medical Procedures, and Other Disfavoured Areas i. State Street ank TI1lst v. S{[{Tlature Financial Group, Inc. (p.156): Business methods that produce a useful, concrete, and tangi.ble result are patentable ii. AT T.'. Excel Communications (p.163): No transformation of matter is required so long as there is a useful, concrete, and tangi.ble result iii.. Foreign Response I. Europe and Canada do not allow business method or software patents 2. Australia permits both i v. Medical Procedures I. § 287(c)(I): For patents on 'medical activity', the health care practitioner and related health care entity may not be sued for infringement damages or remedies 2. But infringement still applies to manufacturers and distributors v. Sports Methods: questions on whether sports method patents serve the purposes of patent law  III. Utility a Operability 1 invention must operate Le. no perpetual motion de\ices) i1 PTO will generally accept that invention is operational unless it is fantastical e.g. cold fusion, perpetual motion) b. Beneficial Utility i. Are inventions that are injurious to well-being, social policy, or morals of society patentable? 1. Lowell: No 2. Juicy Whlj > Yes ii Lowell v. Lewis p.217): A patent need not be more useful than the prior art iii juicy Whip v. Orange Bang p. 2 19 : An invention whose utility lies in appearing to be something it is not i.e. is deceptive) is patentable c. Practical/Specific Utility i Brenner v. Manson p.229): The invention must have utility as of the time the invention was made ii In re Bran3 p.2 38): Models and in vitro tests may be used as evidence of utility d. Utility Standards: specific, substantial, and credible to a person in the art
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