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Law Outlines Intellectual Property: Patents Outlines

Patents Skeleton Outline

Updated Patents Skeleton Notes

Intellectual Property: Patents Outlines

Intellectual Property: Patents

Approximately 31 pages

These notes provide a complete overview for Intellectual Property: Patents.

The notes are organized by Exam questions/topics (NOT by class topics) with bullet points, therefore are also ideal to organize your answers to the exam and perform the "issue spotting" easily. They are especially helpful for as an easy reference to save time in an open-book exam.

They contain complete 1-paragraph summaries of the most relevant caselaw.

They also have policy questions and useful comments to write...

Available here

The following is a more accessible plain text extract of the PDF sample above, taken from our Intellectual Property: Patents Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Patents Skeleton

Validity

1. Patentable subject matter (§101)

  • Excludes:

    • A. Laws of nature (Mayo)

    • B. Products of nature

    • C. Abstract ideas (Bilski, Alice)

  • Test: Abstract idea + Inventive concept

2. Specification and Procedure:

  • 1. Enablement (§112 (a)): Can PHOSITA do it?

    • Problem with Genus claims

    • Avoid undue experimentation

  • 2. Written description (§112 (b)): Are the claims supported in the specification?

  • 3. Definiteness: Are the claims too broad?

    • For PHOSITA + Specification + Prior art

  • 4. Means+Function (§112 (f)):

    • Construed as per specification + equivalents thereof at the time of issuance

3. Novelty (§102):

  • Prior art: (§102 (a))

    • 1. Patents (§102 (a)(2)

      • i. Issued or prior applications

      • ii. Effectively filed before

        • Priority: (§102 (d))

          • International priority

          • If a divisional, date of the mother

        • Secret prior art problem: We won’t learn until it’s published

        • Pre-AIA: Invented before

      • iii. Name another inventor

      • Except if (§102 (b)(2)):

        • A. Obtained directly or indirectly from another inventor

        • B. Disclosed by inventor

          • (or joint inventor, or another who obtained it from inventor)

        • C. Ownership by the same person, or subject to obligation of assignment

          • No later than effective day of filing

          • Same subject matter and claimed invention

          • Includes joint research agreements (§102 (c ))

    • 2. Printed publications (§102 (a)(3)

  • Test:

    • Anticipation

    • Inherency

  • Statutory bars

    • Now: everywhere, Pre-AIA: in this country

    • 3. In public use

      • Did you relinquish control?

        • Rubic cube no (Moleculon), Caleidoscope in party yes.

        • Can be seen by others and not be (Moleculon), or the opposite (Egbert)

      • Except if:

        • Less than 1 year (§102 (b) (1) +

        • Disclosed by inventor

          • (or joint inventor, or another who obtained it from inventor)

      • more for method claims

    • 4. On sale / otherwise available to the public

      • No need that is was actually reduced to practice! (Pfaff)

        • Selling a documented idea is enough, similar to constructive RTP

        • Not clear if it applies under AIA but we assume so

      • Secret sales:

        • My secret sales bar me (Metallizing)

        • Third party secret sales do not bar me

      • more for product claims

    • 5. Pre-AIA: Not...

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