Patents: Introduction

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Patents Introduction Subject Matter

• Fall 2005
• Prof. Loren

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Patent Act, Venice (1474)

• We have among us men of great genius, apt to
  invent and discover ingenious devices and in
  view of the grandeur and virtue of our city, more
  such men come to us every day from diverse parts.
  Now, if provision were made for the works and
  devices discovered by such persons, so that
  others who may see them could not build them and
  take the inventors honor away, more men would
  then apply their genius, would discover, and
  would build devices of great utility and benefit
  to our commonwealth. Therefore Be it enacted
  that casebook, middle of page 106

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U.S. Constitution (1787)

• Article I, Section 8, Clause 8
• The Congress shall have Power . . . To promote
  the Progress of Science and useful Arts, by
  securing for limited Times to Authors and
  Inventors the exclusive Right to their respective
  Writings and Discoveries

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Policy Justification?

• Utilitarian
• Hard to justify based on labor/personhood
• Labor the exclusionary rights are too broad
• Personhood not the type of matter typical to a
  personhood justification
• Utilitarian optimal design is difficult

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Thinking about the different areas of IP
protection..
of items protectable
of acquiring protection
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U.S. Patent System

• 1790-93 Examination system (State, War, AG)
• 1793-1836 Registration system
• 1836-Today Examination system (Pat Office)
• 1982 Creation of U.S. Ct. App. Federal Circuit
  (CAFC)

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U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S.P.T.O.
U.S. District Ct.
patent prosecution
infringement litigation
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Types of Patents
Applications 356,943 Grants 164,293
Applications 23,975 Grants 16,695
Applications 1,221 Grants 1,016
2004 data
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Patentability Requirements

• Patentable subject matter
• Utility (usefulness)
• Written description Enablement ( 112)
• Novelty ( 102)
• Statutory bars
• Non-obviousness / inventive step ( 103)

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U.S. Patents

• Right to exclude others from making, using,
  offering to sell, selling, or importing patented
  invention in U.S. (35 U.S.C. 271(a))
• A patentee shall have remedy by civil action for
  infringement of his patent. ( 281)
• Lets look at U.S. Pat. No. 5,443,036

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No cat can resist this toy!
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Parts of a patent

• Patent number
• 036 patent
• Inventor(s)
• Dates
• Date filed 11/2/93
• Date of patent 8/22/95
• Prior Art (references cited)

• Title
• Specification
• Describes problem
• Describes solution
• Drawings
• Ends with Claims
• Numbered
• Independent / dependent
• Metes and bounds of the invention

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Right to Exclude

• Patent confers a right to exclude others
• One patent claim can dominate another
• Blocking patents
• Patentee A I claim X.
• Patentee B I claim XY.
• Can Patentee A practice (XY) ?
• Can Patentee B practice (X) ? (XY) ?

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Patentable Subject Matter

• 35 U.S.C. 101
• 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 therefor, subject to
  the conditions and requirements of this title.

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Diamond v. Chakrabarty(S. Ct. 1980)

• Tech g.m. bacterium that degrades crude oil
• Files application with claims to . . .
• method of producing bacteria (granted)
• carrier containing new bacteria (granted)
• bacteria themselves (rejected)
• Text of section 101 ?
• Legislative history of section 101 ?
• What is NOT patentable ?

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Chakrabarty

• Congress passed the Plant Patent Act (1930) and
  the Plant Variety Protection Act (1970) because
  section 101 doesnt cover living things.
• Why does the Court reject this argument ?
• Why are the dissenters persuaded by it ?
• Congress has not expressly authorized patenting
  of micro-organisms by name .
• Why does the Court reject this argument ?
• Why are the dissenters persuaded by it ?

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Parke-Davis v. HK Mulford(S.D.N.Y. 1911)

• Tech Purified adrenal gland extract
• adrenaline, or epinephrine
• Parties
• Parke-Davis owns two patents sells Adrenalin
• HK Mulford owns no patents sells Adrin
• Does Claim 1 of the 176 patent cover adrenaline
  as it exists in the body ?

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Parke-Davis

• PTO
• no product is patentable, however it be of the
  process for obtaining it, which is merely
  separated by the patentee from its surrounding
  materials and remains unchanged
• Judge Hand
• But, even if it were merely an extracted product
  without change, there is no rule that such
  products are not patentable.
• Standard for patentability ?

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Patentable Subject Matter

• 35 U.S.C. 101
• 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 therefor, subject to
  the conditions and requirements of this title.