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Law Outlines Patent Law Outlines

Utility §101 Outline

Updated Utility §101 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:

Utility (§101)

If you haven’t shown utility in § 101, ALSO fails § 112 under disclosure because haven’t disclosed a useful invention.

Utility -- § 101 – “New and useful”

  • Dovetails with § 112

Four different components to the Utility Requirement

  • Beneficial Utility: Not Illegal in all 50 States. Ex/ Gambling technology used to be illegal except in Vegas. Can’t patent nuclear technology. Can’t patent human beings (AIA) — stem cells?

  • “Practical Utility”

    • Specific Utility: Have a specific use for the invention

      • How specific does it need to be? “Anti-tumor properties” not specific enough, but listing a specific cancer would be.

      • Not enough to give a fake/throw-away utility. No paperweights. Basically, are you telling the truth?

      • Fisher: If the asserted utility can be true for a vast class of inventions, not specific enough.

      • Important in biotech/pharma, don’t really know what they’ll be good for necessarily.

    • Credible Utility:

      • Do not generally have to prove a certain use. Burden of Proof on the PTO to show that the invention won’t work for a certain purpose.

      • BUT Life Sciences/Drugs/Diagnostics/etc.: Patentees need to provide some evidence, depending on the invention. Experiments: in vitro or in vivo. Not necessary to provide human experiments.

    • Substantial Utility:

      • Invention needs to have immediate real-world benefits to the public.

      • Cases that DON’T meet it: An invention that has no use but is the subject of an inquiry to find its use; a process for creating something that has no use as of yet;

      • Research Tools are patentable; Objects of Research are not. (ESTs a weird in between, but not patentable because a very specific research tool, don’t know what that thing is doing.)

        • Fuzzy in the research tool/research intermediary space (Fisher)

** Utility requirement is about when you grant the patent

  • Economic debates among academics come down to the vision of when patents should be granted.

Beneficial Utility

Need not be the BEST, just useful. Inventions that are UNIVERSALLY illegal and/or harmful are likely to fail usefulness showings.

  • Lowell (D. Mass 1817)

    • Invention: New kind of pump

    • Justice Story: NOT have to be better; just has to have some beneficial use. “useful” is in contrast to mischievous / immoral.

    • POLICY

      • Market will figure out what’s the best, and what inventions are worth buying/commercializing.

      • Patent system is about innovation, not marketability.

      • There would be huge judicial administrability problems if judges had to decide if a given invention was more useful than an existing one.

      • Give people a monopoly over their invention for a limited time to attempt to monetize the invention. Government doesn’t need to know or care what a good or bad invention is.

  • Juicy Whip...

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