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Patent Attack Outline

Law Outlines > Patent Outlines

This is an extract of our Patent Attack document, which we sell as part of our Patent Outlines collection written by the top tier of University Of Virginia students.

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

1) CLAIM DRAFTING JUST TRY TO CLAIM THEIR INVENTION. WHAT THEY DID THAT WAS NEW. Formatting: (Goal is to define the boundaries of your property rights).
-Single sentence requirement. Can't have to independent clauses. 0) Preface/introduction: "what I claim is...
-doesn't have to be ornate. 1) Preamble: "a bacterium from the genus X..."
-noun that is the object of the sentence
-giving purpose doesn't limit it to only that purpose unless the language is necessary or essential. 2) Transition word: "containing therein
*presumption of open format unless there is some limiting language.
-comprising = (open claims) includes the elements described thereafter and anything that includes each those elements PLUS anything else. Open class.
-consisting essentially of = (in between) includes elements described thereafter and anything that includes those elements AND addition of elements that don't change the essential function/properties of the compositon. (ex: coloring dye added on).
-consisting of = (closed claims) includes nothing but the things described after.
*better for unpredictable fields, where slight changes could change properties.
-"By causing" (makes sense for methods).
-'wherein the improvement comprises' for improvement patents. (Jepson claims). 3) BODY: Describe the elements, sub-elements, and how they connect
-Dependent claims: reference prior claim, incorporate all its limitations by reference + add more.
-further transition,=>sub-elements.
-"wherein" to change subject. "Part C, attaching said part A; wherein said pt A is made of gold" POTENTIAL ISSUES:
-The broader the claim, the harder it will be to patent the invention.
*NEED an antecedent basis in the specification, prior claims, or PHOSITA knowledge.
-New elements introduced w/ "a/an X"
-Then when referred to again, "said X"
-Means-plus-function elements: cover any means for performing the function.
*use the word "means" => presumed to be M+F element. UNLELSS M+F if a specific structure is described in the claim.
-cover only the means disclosed in the specification + equivalents.
-have to ID a means, even if clear to PHOSITA.
-make the entire claim narrowly construed.
-Claim must recite more than a single element. ('claim for a combination') Ex: NO - "widget comprising means for fastening A to B" Ex: YES - "widget comprising A, B and a means for fastening A to B"
-Can recite two+ elements, both of which are means+function. Ex: 'widget comprising means for performing function X and a means for performing function Y'
-Product-by-process claims: interpreted as drawn to the product, but still limited by the process steps. (often for chemical inventions, too hard to describe the chemical itself).
-Improvement claims (Jepson claims): "In X ... an improvement comprising Y and Z"
-(Group selection claims) Markush claims: "A comp comprising ABC, where C is selected from the group consisting of X Y Z"
-Random tips
-try drafting multiple levels
-Thing = object; article; apparatus; device; member; medium; mechanism. Means*
-Definiteness (see written description below).
*maybe suggest defensive publishing instead of patent? (though not in my best interests as your atty) OTHER
*check infringement section for potential issues.
*claims don't have to enable, obviously.

2) PATENTABLE SUBJECT MATTER (SS101) (Always Raise) 1) Claim MUST FALL UNDER SS101 CATEGORY: *basically ALL inventions are. "process, machine, manufacture, or composition of matter" or any improvement thereof.
*Broadly defined - "anything under the sun that is made by man" (Chakrabarty). "Process" = process, art or method. Includes new use of a known process/machine/mfger/comp. (SS100)
*narrower by definition - all steps must have been performed in the same order. "Machine" = generally an article with moving parts. (Chak). "Composition of matter" = comps of 2+ substances, thru chemical union or mechanical mixture. "Manufacture" = *(catch all), production of articles, giving these materials new forms, qualities properties or combinations. (Chak). "or any new and useful improvement thereof" 2) DIRECTED TO A PATENT-INELIGIBLE CONCEPT? (Pt. 1 of Alice test). *basically ALL inventions
-Laws of nature: fundamental facts about the universe (not 'new' under SS101 - Bilski).
-Products of nature: "natural phenomena"
-Abstract ideas: exists as thought/idea, but not physical or concrete. (not 'useful' under SS101: Bilski). FACTORS:
-longstanding human practice(Alice), mathematical formulas (Benson).
-'building blocks' of other inventions should be protected. (Purpose of the exclusion). 3) INVENTIVE STEP? (Pt. 2 of Alice test). The court must find "an element or combination of elements that is sufficient" to ensure that the patent is significantly more than just a patent on the ineligible concept itself. Some application of the concept. BUT must be careful, lest this exclusionary principle "swallow all of patent law" since everything directed to #2
*Split the elements? DO BOTH (apparently).
-Diehr: look at the claim as a whole.
-Alice: take claim elements separately, is each step is purely conventional. Whole can be > sum.
-FACTORS
-NOT groundbreaking nature of the discovery, or extensive effort.
-Adds more steps, limiting its scope; Something markedly different from what's in nature.
-broad-sounding language is problematic. (Morse "I do not propose to limit myself")
-broad claims problematic, more than contribution . (Funk Bros. - [claimed all combos of the material]).
-claiming more than your contribution. (Morse unpatentable, Bell patentable).
-(though it runs together) degree of nonobviousness/usefulness (practical application). (Bilski?).
-type of article/process historically subject to patent protection? (Diehr - industrial).
-Process patent factors
-not just mental steps. (Benson).
-machine or transformation test ('useful clue' but not determinative, not sufficient. Bilski). Process either
-Tied to a particular machine or apparatus
-Or transforms a particular article into a different state or thing
-process limited to specific ends/means suggests patentability. But can't avoid bar by adding 'insignificant post-solution activity' or 'limiting to a particular technological environment' (like a computer) (Diehr; Flook).
-general purpose computer isn't limiting enough. (Benson -algorithm on comp).
-CASE COMPARISON
-Processes: (Diehr; Alice; Bilski; Telephone cases); Products of nature: (Chakrabarty; Funk Bros; Myriad)
*medical procedures have special rules; Software (arguments go both ways; Benson; Flook; Diehr; Alice;); Biz methods (Bilski) (less likely to get injunctive relief - eBay(Kenn)); Older cases (Telephone cases; Morse).
*OTHER FACTORS
-as technology changes, patent law should as well (Kennedy "information age" - Bilski).
-Statute is broad "dynamic" provision (J.E.M.); unlikely to create new field restrictions in light of Bilski.
-Congressional argument can go either way.
-Up to congress to include tech fields w/in patent protection. (Benson).
-Up to congress to exclude fields from patent protection. (Chakrabarty).
-Fundamental building blocks can go either way
-need to be public so more apps can be found; OR are important, so they should be incentivized.

3) UTILITY
SS101: only for ... "useful" sm. And SS112: must describe "manner + process of making and using the invention"
*PTO Has initial burden (Swartz) 1) PTO has initial burden of rebutting presumption of utility with evidence that those skilled in the art would 'reasonably doubt the asserted utility and operability"
=>If so, then burden shifts to applicant to convince those skilled in the art of the asserted utility. METHODS: PHOSITA knowledge + test/experimental data; expert affidavits, etc.
*Operability: *basically if "inherently unbelievable": must actually be able to accomplish the utility alleged
-Don't want to give official recognition to fraud. *Some overlap w/ enablement if doesn't work.
*Beneficial utility: invention can't be socially harmful.
-moral issues generally disregarded unless the s/m is illegal in every state and likely to remain so for the foreseeable future. (Juicy Whip - utility was making one product look like another. Deceptive product, but not unpatentable).
*EPO is more willing to adjudicate moral issues though.
-PRACTICAL UTILITY: (two parts)
*LOW BAR: doesn't have to be economically practical, or work better than what's already existing.
*if it isnt economically practical, it will "silently sink into contempt and disregard" "Immediate, well-defined real world benefit to the public" (Fisher).
-At time of priority (filing date, or earlier claimed invention date)
-By PHOSITA standard. 1) Specific utility: asserted use must ... show that the claimed invention can be used to provide a welldefined and particular benefit to the public. Not 'so vague as to be meaningless' (Fisher).
-specific to the subject matter claimed, different than the broad class. Fisher: Not specific: the alleged uses don't set the 5 claimed ESTs apart from the more than 32K ESTs disclosed in the application, or indeed for any EST. 2) Substantial utility: asserted use must show that the claimed invention has "a significant and presently available benefit to the public" (Fisher).
-commercial success may support utility of invention (Fisher dicta).
-"Presently available" - not just subject of ongoing research. ("Patent [?] a hunting license")
-Brenner (SCOTUS 66): more stringent? "specific benefit in currently available form." Rationale: avoid excessive award (blocking off whole areas of scientific development) for small contribution. Avoid transactions costs on later improvers. OR just need "sufficient likelihood" that it WILL work.
-Brenner v. Manson (SCOTUS 1966): No Practical Utility:
[process for making a steroid. Evid.: 1) ongoing experiments for tumor-stopping effects on mice; 2) next adjacent homologue was shown to work on mice.]
-failed to prove 'sufficient likelihood' that it would work. Still being investigated; homologues can have different properties;
*court suggested evid. of tumor-stopping effect on mice would be enough
-wasn't much evidence of the chemical being used in research.
-In re Brana (Fed cir): less stringent. *inconsistent w/ Brenner?. 'includes expectation of further R+D' ... met well before it's ready for human use
-current utility is comparable to expected future utility? Req met. (Brana).
-Experiments will show? PHOSITA standard. But can't just hypo and prop testing
-In re Brana (Fed Cir 90s): Practical utility
[compounds for treatment of cancer. Evid: worked in vitro against human cells; expert declaration; proven to stop tumors in mice]
So subjects of active research can be patentable, contrary to Brenner's suggestion
-There was some utility, proven anti-(artificial) tumor effect on mice. (this is what distinguishes from Brenner v Manson).
-In re Fisher (2005): No Practical Utility
[EST good for identifying, locating and measuring DNA]
-Not specific (see above) or substantial: EST's can ONLY detect their corresponding DNA, nothing more, and we don't know what the DNA means yet.

4) DISCLOSURE AND ENABLEMENT (SS112) Rationale: quid pro quo of patent. Giving public information in exchange for patent rights. Logically then, scope of what you can claim should depend on scope of what you invented.
SS112(a) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.... The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

A) Enablement
*SS112(a): "spec. shall contain a written description" that enables PHOSITA to make + use the invention.
*satisfied AT TIME OF FILING. BUT can use post-filing evidence that it was enabling at that time.
-OLD SCOTUS: (Incandescent Lamp)
-enablement must be sufficient for PHOSITA to practice without ANY experimentation.
*reconcile by saying that PHOSITA-accepted trial and error [?] experimentation.
-No enablement: claimed whole genus of fibrous textile filaments, but only had a vegetable fiber one. Genus doesn't have a unique characteristic that makes it useful and superior to prior art. Only a few species work, needed experimentation to find them. (Incandescent Lamp).
-(Modern Fed Cir): Application disclosure must permit PHOSITA to make and use the invention Sufficient to disclose an inventive concept whose precise contours are defined by the claims. (Gillete).
-Scope of claims must be commensurate w/ Scope of enablement: that which is disclosed in the spec. plus the scope of what would be known to one of ordinary skill in the art without UNDUE experimentation.
*Usually implicated when inventor claims broadly despite having a few examples; or files relying on prediction that invention works. BUT don't have to show how to make every claimed embodiment...
Wands FACTORS: for whether a specification requires undue experimentation to produce a representative number of the claimed embodiments, or fulfill the prediction.
*and 'technology and expectations of the art'
-if field has high trial+error rate, then need a lot of experimentation to be 'undue'
-Enabled: despite only 1-2% process success- that's standard in the field. (Wands).
-predictability/unpredictability of the field (element by element) (IMPORTANT).
-predictable=>wider scope of enablement. Can predict that other embodiments will work from disclosure of a few.
-mechanical + electrical fields are predictable. (ex: nail or screw works same)
-chemical fields unpredictable. (minor difference can greatly change properties).
-quantity of experimentation necessary
-Enabled: IDed list of chemicals for combo, 40% of combos wouldn't work. Not undue experimentation, PHOSITA could modify failures to get closer to result. (DuPont).
-Not enabled: IDed 30 working compounds for claim of 1000s of compounds. (Cavalito).
-amount of direction or guidance presented => suggests enablement.
*starting materials not apparent to PHOSITA must be enabled.
-presence or absence of working examples. RTP.
---*but no actual RTP required. Can demonstrate w/ analytic reasoning+prophetic exs.
-Not enabled: evidence showing chemical had increase in cell activity. Analytic reasoning that it would work in treating Alzheimer's. Did "no more than state a hypothesis and propose testing to determine" its accuracy. (Jannesen).
*But cannot imply that prophesies have been completed. (Purdue v. Endo).
-breadth of the claims: must bear reasonable correlation to scope of enablement. (Fisher).
-indefinite rangers are problematic. ('concentration greater than 2.0').
-Not enabled: claimed 'concentration of at least 1.0' but enabled only up to 2.3. Much smaller range actually enabled. PHOSITA couldn't get above 2.3 from it. Fisher.
-Not enabled. Claimed 'at least 10%' change, but only had achieved 11.8%. (Magsil).
-OTHERS: nature of the invention; state of the prior art; relative skill of those in the art.

B) Best Mode. Inventor must disclose (doesn't have to be expressly labeled) the best mode she knows for practicing the claimed invention, and must be disclosed to enable PHOSITA to practice it. UNLESS applicant does not have a best mode at time of filing. It's a subjective requirement.
*effectively unenforceable, can't be raised via a private party's challenge to a patent. BUT required for priority date. (So if claiming foreign filing date, foreign app must disclose BM).

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