Law Outlines Patent Law Outlines
Typical US Patent Law outline, contains a checklist of key issues to spot (patentability requirements, infringement, defenses, and so forth), as well as details on key cases and provisions of the patent law about all the main patent law topics. Course also emphasized policy rationales underlying patent law, which is interspersed throughout....
The following is a more accessible plain text extract of the PDF sample above, taken from our Patent Law Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:
§112 Disclosure
Overriding policy concerns: When someone invents something, a question of how to define what they’ve created.
Need to walk between these two lines.
If you define too narrowly, patent is essentially worthless. Easy to design-around by moving a screw a millimeter. Can even hurt inventor, because makes it easier for competitors to compete.
If you define too broad, may stifle important lines of subsequent innovation.
Give you a patent exclusively for what you’ve enabled and given to us.
Much easier said than done. Conceptually the hardest part of Patent Law.
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Morse (US 1854)
Morse Code claim is too broad because covers a huge range of discovery rather than just the invention.
HOLD: Discovery of a natural principle is not patentable, but a particular means to use it is patentable.
Incandescent Lamp
Edison better bamboo.
Sawyer & Man claiming a large category of stuff, much of it won’t really work. Doesn’t tell us why Carbonizing Fibrous materials is at all good for this. No guiding principle for what in this category is useful
S&M could have solved: (1) by having specific material; or (2) having a theory for why this works.
Patentee must describe invention such that PHOSITA can make / use it w/o undue experimentation.
** Enablement doctrine the only doctrine that tries to tease out whether you’re claiming too much or too little.
Genus/Species
In re Wands (Fed Cir 1988)
Patent on a diagnostic for Hepatitis based on antibodies
Even though patent describes process, it’s not predicable.
If you go through process but don’t obtain desired result each time, then not enabled.
(FACTORS below)
Janssen Pharmaceutica v. Teva Pharms (Fed Cir. 2009)
Invention: Method for treating Alzheimer’s with a drug.
(Method of use patent because drug was already known)
** THIS CASE shows §§101 and 112 overlap.
ISSUE: Janssen got the patent in 1986, but the animal studies showing effectiveness did not happen until 1987.
Janssen mentioned the experiment in their patent application, saying they expected positive results.
HOLD: specification must do more than state a hypothesis and propose testing to determine the accuracy of that hypothesis.
Hadn’t yet tested dosages, so POSA would’ve had to test.
***Janssen probably should’ve just waited 6 months for the study to finish before filing.
When has a patent enabled PSA to reproduce the invention without undue experimentation? Factors: (In re Wands)
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NOTE: Gentry Gallery an outlier case. Lizardtech and Ariad...
Buy the full version of these notes or essay plans and more in our Patent Law Outlines.
Typical US Patent Law outline, contains a checklist of key issues to spot (patentability requirements, infringement, defenses, and so forth), as well as details on key cases and provisions of the patent law about all the main patent law topics. Course also emphasized policy rationales underlying patent law, which is interspersed throughout....
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