PATENTLAW OUTLINE
NOTE: Standards of Review
Fact – clearly erroneous (if decision by judge); deference given to lower court
Fact – substantial error (if decision by jury); deference given to jury
Law – de novo; NO deference given to lower court
I.Overview
[see pgs 643-644 for good overview]
II.Patent construction - § 112
A.Types of Claims, § 112 ¶¶3 & 4
1.Independent Claim – does not refer to any other claim
2.Dependent Claim – refers to one or more claims in the patent (e.g. A windmill according to Claim 1…)
a.Dependent claim specifies some feature of the general invention claimed in the referenced independent claim
b.Dependent claim is narrower than the referenced independent claim; dependent claim incorporates all limitations set forth in referenced claim (§ 112, ¶4)
c.What happens when referenced independent claim invalidated? Does not necessarily mean that dependent claims are invalid either since they are narrower (less likely to anticipate or be obvious) [pg 31]
d.Converse: if independent claim is valid, dependent claim must be valid b/c it is narrower
3.Scope of Listed Claims – independent claims are listed in order, staring with the most broad and working down to the least broad
B.Claim Language (pg 28)
1.Open Claim: Broad - an invention comprising elements A, B, and C; claim covers any embodiment of invention having elements A, B, C, and any additional elements
2.Closed Claim: Limited – an invention consisting of elements A, B, and C; invention limited to just those elements, so product using A, B, C, and D does not infringe
3.In-Between – an invention consisting essentially of elements A, B, and C; a product that contained element A, B, C, and D would NOT infringe if element D made the product essentially different from the claimed invention
C.Patent Term – 20 years from date of filing
1.Exception: Provisional Applications – 21 years from filing date
D.Publication – patent applications in the U.S. are published after 18 months if that same invention is the subject of corresponding foreign prosecution in a country that requires publication after 18 months
1.Prior to 1999, NO domestic patent applications were published until registered (pg 62)
III.disclosure - § 112 (ch. 4)
- PRESUMPTION – when considering invalidity, burden on challenger and presumption is that patent reg. is valid; NEED clear and convincing proof
A.Overview
1.preliminary description of the invention: what it is, what it does, and what inventions came before it
2.Quid Pro Quo – to gain monopoly, patentee must disclose how the invention works (pg 259)
a.Balancing property right (monopoly) w/ policy (promoting science by public disclosure)
3.Contains 4 Parts under § 112, ¶1 – enablement, written description, definiteness of claims, and best mode
B.Enablement (§ 112, ¶1)
Question of law (pg 321)
1.Inventor must describe invention clearly enough so that PHOSITA can understand it well enough to make and use it (pg 262)
a.KEY - description should be clear enough that PHOSITA would NOT need undueexperimentation to reproduce claimed invention
2.BUT, inventor need NOT disclose in patent what is well known in the art (pg 283)
a.Enablement is NOT precluded by the necessity for some experimentation, such as routine screening
3.Factorsto Determine Whether Disclosure Would Require Undue Experimentation (fact analysis) [Wands, pg 285]
a.Quantity of experimentation necessary
b.Amount of direction or guidance presented
c.Presence or absence of working examples
d.Nature of invention
e.State of the prior art
f.Relative skill of those in the art
g.Predictability or unpredictability of art
(1)the more predictable the field of technology, the less disclosure necessary to enable a broad claim; SO, broad claim can be enabled by disclosure of single embodiment when result is predictable (pg 290-91)
h.Breadth of claims
(1)A claim can be broader than the specific embodiment disclosed in specification (Gentry, pg 318), BUT claim is necessarily limited by prior art and specific written description
4.Staring Materials – if invention is made of materials (staring materials) not known in the art, inventor must set forth how to make the starting materials to comply w/ enablement requirement (Wands, pg 288)
5.Deposit – PTO has depository for strains of microorganisms, which is necessary for some patent appls to meet enablement requiremen
6.Policy – teach PHOSITA how to do it; alerts public about limits of invention
C.Written Description(“WD”) (§ 112, ¶1)
question of fact, look to expert witnesses (pg 311)
GREAT DEBATE – most scholars believe WD is redundant w/ enablement; WD is a heightened standard that can be used to invalidate many patents, especially technological patents that describe invention in functional terms (Rochester appendix denying en banc hearing)
1.Theory – teaching function that gives public invention in exchange for monopoly (Rochester, handout, pg 922)
a.Historical – WD was very important initially b/c law did not call for “claims”
b.NOW, Broad Purpose – WD is not merely to describe invention BUT to convey w/ reasonable clarity to PHOSITAs that as of patent filing date, invention was in inventor’s possession (pg 307)
(1)Can add claims after filing, BUT can NOT change WD after filing [no new matter in disclosure, § 132(a)]; SO WDprevents inventors from adding numerous claims since those claims may not be adequately “described” in the WD
c.Typically, WD coupled w/ priority issues (§ 120) (WD in senior application is not sufficient to cover claims in junior application), OR whether “new matter” was introduced into patent (forbidden under § 132)
2.Parallels and Limits Claims - inventor must highlight or describe what she claims, and claim what she highlights (pg 262)
a.KEY–analysis evidencing patent has WD: (1) does WD provide any guidance to steer the PHOSITA on how to make elements listed in the claim OR (2) that the PHOSITA would already know, at the time of filing, how to make the elements? (Rochester, handout, pg 929)
(1)generic words typically do not meet WD requirement, unless they are common words to PHOSITA; instead must specifically describe the invention OR give range of properties when invention covers numerous embodiments
b.Inventor need NOT describe more than one embodiment of a broad claim to adequately support that claim (pg 317); HOWEVER right to exclude may be limited by narrow written description (disclosure); e.g. mounted console in sofa in Gentry
c.Inventor is entitled to draft claims as broad as prior art and WD will allow (Gentry, pg 318); BUT WD can be broader than claims b/c it may contain things that were later rejected by PTO
(1)Pioneering Invention - Claim can state “all” embodiments of a particular invention if they enable all the embodiments existing at time of application (typically, very few embodiments since pioneering invention); this “all” broad claim would then cover improvements discovered in future
d.BUT - after Gentry, to invalidate based on written description, court required clear or unambiguous language in description that calls for narrower claim (pg 319)
3.Written Description Differs from Enablement – its purpose is broader than merely explaining how to “make and use” invention; it ensures the scope to exclude, as set forth in claims, does not overreach the inventor’s contribution to the field of art as described in patent’s specification (Rochester, handout, pg 920)
4.Written Description Differs from Claim – a claim describes the inventions function or process (i.e. what it does) and sets scope of exclusion; whereas WD describes the structure (e.g. what it is) at time of filing for PHOSITA to learn, it is teaching mechanism (Rochester, handout, pg 923)
5.Other Notes
a.Drawings alone can meet written description requirement (Vas-Cath, pg 307), but the drawings must effectively describe invention in the eyes of PHOSITA (pg 310)
b.WD analysis is not limited to cases in which the legal question is one about priority (Rochester, pg 924)
c.Do NOT need reduction to practice to satisfy WD requirement (Rochester, pg 926)
D.Definiteness of Claims (§ 112, ¶2)
1.Claims must be drafted clearly, so PHOSITA can discern boundaries of patent (pg 262)
a.Inventor must state clearly what is claimed and what is left free to public use
2.Policy – shapes future conduct of persons other than inventor by insisting that they receive notice of scope of patented device (pg 307)
E.Best Mode (§ 112, ¶1)
Question of fact (pg 345)
1.Subjective Drafting by Inventor – of all embodiments encompassed in claims, inventor must state which one, if any, he believes is most effective at time of filing (pg 263; Randomex dissent, pg 340)
a.NO requirement that inventor point out which listed embodiment does he consider the best mode; inventor only required to list best mode as one of the embodiments (Randomex, pg 339)
2.Stricter than Enablement – NOT every detail of invention needs to be described to met enablement requirement, BUT all the details of best mode must be present (pg 342)
3.Analysis – look at evidence (facts) and determine if inventor tried to conceal best mode (e.g. used trademark to describe cleaning fluid rather than ingredients of cleaning fluid)
a.Two Components to Analysis (Chemcast, pg 345)
(1)Subjective - At time application was filed, did inventor know a mode for practicing invention that was better than all others?
(a)If inventor envisions numerous of carrying out invention, NO need to highlight best mode (per Randomex, pg 349)
(2)Objective - If so, did the inventor disclose this best mode in a way that a PHOSITA could practice the invention in that embodiment?
(a)View from PHOSITA’s ability; PHOSITA must be able to ascertain best mode
(b)Adequacy of disclosure is objectivetest based on (1) scope of claims and (2) level of skill in the art
(i)Best mode needs only to be disclosed in a way that meets enablement test (per Chemcast, pg 349)
(ii)This part of test permits disclosure that requires significant, but not undue, experimentation (pg 350); so inventor can say “here is best mode” and then describe it in general terms
4.Inventor need not update the best mode to include modes discovered after filing application (pg 343); would fall under “no new matter” forbidden per § 132
5.Distinguish Radomex and Chemcast – using trademark in Randomex was fine b/c cleaning solution was not an element in claim so not part of invention; BUT using trademark in Chemcast was NOT fine b/c hardness of grommet was an element in claim, so inventor needed to disclose how to make or obtain that specific grommet
IV.Noveltyand derivation - § 102 (ch.5)
- Bars patent b/c inventor was NOT the first to disclose invention
- ***NOTE: to invalidate patent, Fed Cir requires corroboration of witness testimony rebut presumption (§ 282) that registered patent is valid, MORE than just patentee’s testimony; crucial for establishing priority***
- “clear and convincing” to rebut presumption (e.g. patent reg.); but only “preponderance of the evidence” if no presumption (e.g. patent pending)
A.Overview
1.Theory – novelty of invention is like consideration for a K; society’s contract with the inventor is binding b/c inventor has given something of value (i.e. new) in exchange for patent registration (monopoly)
2.Timing - novelty is directed only at events that occurred before the time of invention
3.Difference Abroad – novelty is measured in U.S. by date of invention (priority goes to who invented first); however in other countries novelty is measured by filing date (priority goes to who filed first)
a.Thus, novelty disputes (interferences) are unique to U.S. (pg 364)
B.Steps for Novelty Analysis (pg 364)
1.Does item qualify as reference?
a.Reference - any art that is relevant under § 102
2.Is the effective date of reference earlier than critical date?
a.Effective Date – date material became part of art (e.g. publication date)
b.Critical Date – date of invention [note: term is different for statutory bar analysis]
c.Prior Art – any material having an effective date before the critical date
3.Anticipation - Is the information disclosed in a pre-critical date reference sufficient to render applicant’s invention non-novel?
Anticipation is a question of fact, deference to lower court
a.Anticipation requires all of the relevant information to be disclosed in a singe reference (pg 365), i.e. the reference discloses the identical invention
[NOTE: if analysis needs more than one reference, look to obviousness under § 103]
b.Every Element Test–each and every element as set forth in claim is found, either expressly OR inherently described, in a single prior are reference (Robertson, pg 368)
(1)Step 1 – does prior artreferenceexpressly include all elements of junior patent’s claim?
(a)If prior art is a patent reg., can look at claims AND specification
(2)Step 2 – If not expressed in prior art reference, were all the elements of the patent appl. claiminherent in the reference?
(a)Limitation on Inherency - Extrinsic evidence must be clear that missing descriptive matter in prior art reference is nevertheless necessarily present in reference AND would be so recognized by PHOSITA
(i)Court must view from eyes of PHOSITA; would PHOSITA have appreciated the inherent features of prior art?
(b)Inherency can NOT be established by mere probabilities or possibilities (Robertson, pg 369)
Create chart to compare patent appl’s claim elements with prior art reference
c.KEY: A prior art reference can NOT anticipate an invention unless the reference is enabling (either patent or publication) [pg 380]
(1)NOTE: the enabling standard for prior art under § 102 is watered down, prior art does NOT need to disclose any use for invention, no utility needed; BUT strict test for enablement under § 112 that requires teaching (Hafner, pg 382)
(2)BUT, if reference names elements but then states that author/inventor was unsuccessful at creating invention, then NO anticipation (Wiggins, pg 387)
(3)Product itself can anticipate, even those products that would not inform public about how to make them (overlaps w/ “public use” in 102(b))
d.KEY: Limitations on Prior Art – overall, novelty is strict test and allows many forms of prior art to destroy patent appl’s novelty; BUT the limitation is that the prior art must be available to inventor at time of invention
(see below examples: theses in shoebox, Cronyn; unknown isotope in radioactive waste, Seaborg; unrecorded knowledge of prior inventors in NTP; unappreciated steam process in Tilghman; and lost prior art in Gayler)
e.Anticipation Compared to Literal Infringement – analysis is basically the same, except anticipation deals w/ material whose effective date is before the critical date (that which would literally infringe if later in time, anticipates if earlier than the date of invention) [pg 371]
(1)NOTE: anticipation does NOT apply to infringement by DOE
f.Why do strict novelty analysis when broader obviousness analysis typically follows? Court believes it must follow this schedule in keeping w/ language of § 103 (pg 372)
g.Accidental Anticipation – if the result of invention was also found as an accidental or undetectable phenomenon in a prior art reference, the prior art reference does not anticipate (Seaborg, pg 375, and notes on pg 378); PHOSITA would not have found reference
h.Claim Lists a Range – if claim lists a range, and prior art falls w/in that range, then the claim is anticipated (Titanium Metals, pg 387)
i.genus v. species (clothing to sock), a reference that discloses a species anticipates a later claim to a genus containing that species, BUT not vice versa (reference disclosing genus and claim listing species) (pg 390-91); equates theory that one can NOT patent new way to use old invention
(1)HOWEVER a new species (improvement) can be patented if the new species is not obvious under § 103 (pg 391)
C.Disclosures in Earlier Users, Publications, or Patents [§ 102(a)]
1.Statute
a.Known or used by othersin U.S. before date of invention, OR
b.Patented or described in a printed publication in worldwide before date of invention
2.Known by Othersin U.S.
a.Not limited to documentary evidence, product itself can anticipate (pg 398), or even oral testimony (although, w/out corroboration from some other evidence, oral testimony is not very strong) (pg 402)
b.Public Knowledge – knowledge which is reasonably accessible to the public, involves some type of public disclosure (drawing on tablecloth not public in National Tractor Pullers (“NTP”), pg 400)
(1)NOT satisfied by knowledge of single personb/c statute states “others”; but NTP case also says a few persons working togetheris not public knowledge (NTP, pg 400)
c.Lost Art – if prior art product is lost and no other documents evidence its construction, it can NOT anticipate (Gayler, pg 402); BUT later case questioned, but did not overrule, this rule: is technology ever lost? Should patent law pull back what was once in public domain? (Coffin, pg 403)
3.Used by Others in U.S.
a.Non-secret uses in the ordinary course of business anticipate patent application (pg 405)
b.Use does NOT need to be commercial to anticipate, just observable by public when typically the process or device would not normally be so viewed (pg 406)
c.Incomplete or unsuccessful experiment does not constitute use by others (Rosaire, pg 404, and notes, pg 405); HOWEVER, experiment can anticipate and become prior art provided it is perfected and thereafter became publicly known
4.PrintedPublications Anywhere (also applies to § 102(b) below)
a.Not restricted to formal publications such as widely circulated magazines and newspapers (Jockmus, pg 409)
b.Burden on Proponent of Publication Bar - must show that prior to the critical date the reference was sufficiently accessible, at least to public interested in the art, so that someone examining the reference could make claimed invention w/out further research or experimentation (reference was enabling) [Hall, pg 411]
(1)NO requirement that reference was obtained by anyone, just that it was accessible to anyone searching (pg 413)
(2)Confidential letters or restricted reports (e.g. military or corporate reports) are NOT publications
(3)Thesis or dissertations are NOT “published” until indexed and available in catalog, such that patentee could find it
c.Time of Publication – becomes public when it becomes available to at least one member of “the general public” (pg 413); e.g. date newspaper published, NOT date when writer submitted story to editor
5.Patented Anywhere(also applies to § 102(b) below)
a.All U.S. patents qualify to anticipate
b.Foreign Patents
(1)Utility Model Patents – where the utility model qualifies only as “patented” prior art and not a publication under 102(b), then it anticipates ONLY for it claims (disclosure does NOT count) [Reeves, pg 417]; b/c disclosure would equate what is known or used and that is restricted to U.S.
(a)HOWEVER, some utility models have been treated as publications, such that claims and disclosure could anticipate
(2)Design Registrations- considered “patents” b/c it conveys exclusive right (pg 418)
(3)Foreign patents must be accessible to public, but indexing, cataloging, etc. are not required (pg 419)
D.Disclosures in Earlier Filed Applications [§ 102(e)] (pg 427)
1.Merely disclosing the invention (i.e. not claiming but merely describing), is enough for anticipation and bar claim in subsequent application (pg 425)
a.Material disclosed but not claimed in patent is available as prior art ONLY under § 102(e); NO interference under § 102(g), b/c interference is available only for overlap in claims
b.Senior patent constitutes prior art as of its filing date, not the date of its public disclosure (Milburn, pg 426)
2.1999 Amendment to 102(e) - Disclosures in patent application constitute prior art provided that the application either issues as a granted patent or is published pursuant to § 122(b)