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Law Outlines Patent Law Outlines

Novelty §102 Outline

Updated Novelty §102 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:

§102 Novelty

Introduction

  • Robertson (Fed Cir 1999)

    • Legal standard: Each and every element in the questionable claim has to be included (expressly or inherently) in the prior art.

      • If more than one prior art reference, then it’s OBVIOUSNESS not NOVELTY – different test.

  • In re Schreiber

    • Invention: Cone on top of popcorn to dispense

    • Prior Art: Funnel top of oil can.

    • Different function not sufficient to distinguish prior art for novelty analysis

    • “If it would infringe later, it anticipates before”

    • OUTCOME: Patent is invalid; has been anticipated

Derivation

  • Campbell:

    • Presumption of validity – creates burden of clear and convincing evidence that patent is invalid on the challenger.

    • Need evidence beyond testimony in this case we have the photo of the belt buckle which he claim served as inspiration. Court buys it.

2/20

Inherent Anticipation

  • Two different versions of inherent anticipation.

    • Seaborg: If not getting any benefit from it before, it doesn’t really count. Trace, undetectable amounts doesn’t count as anticipation.

    • SKB: If it existed before then that’s it, trace amounts OK -- not new.

  • Tangent: Very few defenses in patent law…

  • SKB is essentially the law, though Seaborg isn’t bad law but just ignored.

  • Rule: Patent invalidated even if prior art reference does not explicitly satisfy the all elements rule, so long as it inherently includes the claimed invention

  • In order for prior art to anticipate, all the elements have to be in one prior art reference.

  • Prior art reference must be enabling

    • BUT only with respect to the making of the invention.

    • Must be sufficient for PSA to make the invention without undue experimentation.

    • Does NOT apply to the use or utility parts of the enablement requirement. (Hafner)

  • Not need to have a disclosure of utility to disclose the making of the invention, and that’s enough to anticipate.

  • (Sprouts case we didn’t talk about: file a patent on harvesting sprouts at a particular time that can fight cancer. Patent rejected because people had harvested at that time. “But they didn’t know about that use!” – we don’t care.)

  • Question to be asking: Prior art references, don’t actually describe all of the elements are there, but is essentially there. Not on the face, but was…

    • Logic behind this rule:

      • Ex/ Wright Bros. discover the airplane. Someone else figures out fluid dynamics and why planes have lift. Can’t then patent the airplane – we were taking advantage of it even if it wasn’t spelled out.

    • Depending on what the doctrine is doing, changes the impact.

  • Seaborg

    • Invention: A man-made element. Halflife is short enough that we’re never going to find it in nature unless we make it.

    • Previous patent created this as a byproduct (treated as waste), but apparently it does have commercial use

    • Accidental anticipation does not invalidate claim

    • Takes from Learned Hand approach: nothing controversial to say patents must be new, but must also be public / enabling.

  • SmithKline Beecham (Fed Cir 2005)

    • If later substance necessarily produced by process to make earlier substance, then anticipated since later substance not new

    • If it infringes, it would have anticipated; if it doesn’t anticipate, it doesn’t infringe

    • Big Pharma trying to keep out...

Buy the full version of these notes or essay plans and more in our Patent Law Outlines.