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Law Outlines Patent Law Outlines

Disclosure §112 Outline

Updated Disclosure §112 Notes

Patent Law Outlines

Patent Law

Approximately 33 pages

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:

Disclosure (§112)

§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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Enablement

  • Make and use without undue experimentation

    • (1) Making and Using – distinct. USE dovetails with § 101 (Janssen).

    • Number of different embodiments in the spec, but not limited to those embodiments. Broader; usually always claim the Genus, not just the Species.

    • Enablement problem: What’s the standard for enabling someone to practice not just the specific embodiment but the idea as a whole?

    • Wand Factors –

      • Want to know if, to find the stuff that works, is this going to require routine experimentation or excessive.

      • How predictable are the results?

      • Etc.

  • 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)

  • Quantity of experimentation necessary !!!

  • Amount of direction or guidance presented !!! (can include specification)

    • Ex/ “High resistance is the key thing for filaments.” Even if you have to go through some experimentation, you know what to look for.

  • Presence / absence of working examples !!!

  • Nature of the invention (does it make enablement by written disclosure difficult)?

  • State of the prior art (well-developed prior art helps enablement)

    • Nature + State: Biotech challenging b/c incredibly small and complex. …

  • Relative skills of those in the art. **higher skill of the art is, tougher obviousness is. !!!

  • (un)predictability of the art (unpredictable art weighs against the enablement).

    • Some arts are predicable.

    • Enablement is more challenging in unpredictable arts.

      • Chairs are an easy, predictable art.

      • Pharma, Chemistry (esp. in humans), etc., unpredictable

    • Also have impact in obviousness. Unpredictable arts have lower bars of obviousness.

  • Breadth of the claims.

    • Broader the claim, the more we’re going to demand.

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Written Description

  • NOTE: Gentry Gallery an outlier case. Lizardtech and Ariad...

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