The Patent Document II

1
The Patent Document II

• Class Notes January 23, 2003
• Law 677 Patent Law Spring 2003
• Professor Wagner

2
Todays Agenda

• The Best Mode Requirement
• Looking at disclosure complex technology
• Inventorship

3
The Standards for Patentability

• A valid patent must be . . .
• Fully and appropriately described ( 112)
• In compliance with statutory bars ( 102)
• Novel ( 102)
• Nonobvious ( 103)
• The work of the inventors ( 116)
• Useful ( 101)
• Within the appropriate subject matter ( 101)

4
The Best Mode Requirement

• 35 U.S.C. 112. - Specification
• 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 the same, and shall set forth the
  best mode contemplated by the inventor of
  carrying out his invention. . . .

5
The Best Mode Requirement

• The Components of the Best Mode Analysis
• Subjective component Did the inventor have a
  best mode of making the invention?
• Objective component If 1 is true, then
  consider whether the disclosure is sufficient?
• What is the standard for disclosure quality?

6
The Best Mode Requirement

• Glaxo v Novopharm (Fed. Cir. 1995) (Rich, J.)
• Subjective component?
• Objective component?
• Why allow Glaxo to play shell games?

7
The Best Mode Requirement

• Great Northern v Henry Molded Products (Fed. Cir.
  1996) (Clevenger, J.)
• Hs 314 patent does not disclose diamond
  indentations in a molded pulp roll support
• Consider Hs argument
• Why not require disclosure of production
  details? (What are they?)
• Why not require disclosure of routine details?

8
The Best Mode Requirement

• Some Best Mode Hypotheticals
• You (the inventor) select a mode by chance or
  convenience. Must you disclose?
• You select a mode because it makes the invention
  easier/cheaper to produce. Must you disclose?
• Assume you mistakenly or inadvertently fail to
  disclose the best mode. Problem?
• Assume you work on a research team
• A (noninventor) colleague determines a better
  mode than you do, and tells you before filing.
• A (noninventor) colleague determines a better
  mode than you do, but does not tell you before
  filing.

9
The Best Mode Requirement

• Key Issue Best Mode vs. the Claim Language
• Engel v Lockformer method of crimping corners
  for invention of corner attachments for ducts
• Unclaimed
• No best mode violation
• Great Northern diamond-shaped indents
• Unclaimed
• Best mode violation
• Northern Telecom way of operating method to get
  fine lines (invention silicon etching)
• Unclaimed
• No best mode violation

10
Disclosure Complex Technology

• Northern Telecom v Datapoint (Fed Cir 1990) (pc)
• Why was the cassette tape issue easy for Best
  Mode? (Consider Newmans dissent.)
• The invention requires software to run. Does
  that software need to be disclosed?
• Fonar v General Electric (Fed Cir 1997) (Lourie,
  J.)
• Note the general rule this has been suggested
  to be the death of the software industry. Agree?
  (Should the court have stated it another way?)
• Note that Lourie wrote most of the
  biotech/chemical written description cases.
  Anything ironic about his views here? (Note that
  Judge Lourie has a PhD in Chemistry.)

11
Inventorship

• 35 U.S.C. 116. - Inventors
• When an invention is made by two or more persons
  jointly, they shall apply for patent jointly and
  each make the required oath, except as otherwise
  provided in this title. Inventors may apply for a
  patent jointly even though
• (1) they did not physically work together or at
  the same time,
• (2) each did not make the same type or amount of
  contribution, or
• (3) each did not make a contribution to the
  subject matter of every claim of the patent.

12
Inventorship

• Hypo Patent 123 has 120 claims. A is the sole
  worker on 119 claims B suggests an improvement
  that makes it as Claim 120.
• Who owns the patent?
• B grants an exclusive license to Company X to the
  123 patent, and keeps the for herself.
  Problem?

13
Inventorship

• Hypo 2 Patent 123 was filed without naming
  Inventor B.
• What needs to happen? How does it work?
• 35 USC 116 (PTO can fix) 35 USC 256 (Court can
  fix)
• Company X, charged with infringement, gets a
  license from B. What happens? See Ethicon, p.
  486.
• Assume A deliberately filed without Bs
  knowledge. What happens?
• 35 USC 116/256
• whenever through error a person is named in an
  application for patent as the inventor, or
  through error an inventor is not named in an
  application, and such error arose without any
  deceptive intention on his part, the Commissioner
  may permit the application to be amended
  accordingly, under such terms as he prescribes.

14

• Next Class
• Loss of Right Provisions
• Prior Public Use
• Experimental Use
• On-Sale Bar
• Third-Party Activity