Patent Law Outline

Patent Law Main Outline

Fall 2015

University of Virginia – Prof. John Duffy

POLICY:

• Why do we want to grant any property rights for innovations?

• Why are the property rights that we do permit so heavily restricted (e.g., ending after only 20 years)?

• Incentive to Create Theory: patents allow for an optimal return on investment for R&D

  • Even without patents, innovation occurs (e.g., marijuana) but there may be sub-optimal ROI

• Prospect Theory: investment/R&D can happen after application for or after granting of a patent (Xerox: product in market much after patent granted)

• First Mover Advantage: first to bring to market will get ROI before copies made

• Regulatory Problem: e.g. pollution - absence of regulation = too much polluters

  • Patent system is the opposite (i.e., a Positive Externality): absence of regulation = too little innovation

• Coase: w/ well-defined property rights and zero transaction costs, there would be efficient R&D, thus no patents needed. Externalities make the patent system necessary

• Competition: patents limit short-term price competition but encourage long-term research competition (it “orders” competition, not limits it) - w/o patents we would have the opposite result

• Natural Monopoly Problem: high development costs but low costs of production thereafter

  • Innovation Costs: high initial cost, i.e., a higher first unit cost, with lower marginal cost

  • Possible Solutions from Friedman:

    • (1) State ownership (now “public domain” subsidy)

    • (2) Private monopoly with regulation

    • (3) Unfettered private monopoly: complete private monopoly

  • Partial Property Rights:

    • Canada pharma: price regulation w/ compulsory licenses

    • Temporarily Limited Franchise: like patents today

    • Other limitations: fair use, first sale, libraries

• Patentability: should 101 track trends in technology? See e.g. financial engineering

• Concern for the need for more investigation:

  • See 101 Mayo, Morse

  • See Utility Brenner

  • See Enablement: Edison

Ch. 1: Introduction

• Patent:

  • (1) Qualifying Inventions: new, useful and not obvious

  • (2) Disclosure Required: must disclose information to allow others to practice the invention

  • (3) Rights Conferred: certain exclusive rights precluding anyone from making, using, offering for sale, selling or importing the invention

• Historical Overview of Patent Law: slides 16-19, with lessons on 20

• The Architecture of a Modern Patent

  • Specification/Drawings

  • Claims: Claims must “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112

    • Preamble: must start with “I claim” or “we claim”

      • Includes what is not part of your invention because may not count for infringement analysis (e.g., airplane seats for an airplane tray table invention)

    • Transition Words:

      • “Open” Claims: “Comprising”

      • “Closed Claims: “Consisting of”

      • “Consisting Essentially of” = in between

        • Can include additional unclaimed elements IFF they do not make the variant essentially different from the claimed invention

      • “The combination with [elements] of [more details]”

      • DUFFY: if evaluating a claim, too narrow a transition word is considered a problem

    • Body of the claim

      • Claim Definiteness:

        • Must be able to determine the scope of the claim, see definiteness, as well as Written Description and Enablement for what’s in the spec.

        • No words like “should,” but “approximately” is more of a gray area

      • Three Formal Requirements for Claim Drafting

        • (1) Single Sentence

        • (2) No Freestanding Elements: must set forth how each element interacts with at least one other element

        • (3) Antecedent Basis: claim references to previously mentioned elements must be clear

      • Independent & Dependent Claims

        • Independent Claim: may not refer to any other claims (“A windmill comprising…”)

        • Dependent Claim: depends on a prior independent claim (“The window according to claim 1, wherein/further comprising…”)

          • Must narrow the independent claim

          • Insurance against granted but overly broad independent claims

          • Helps expedite patent process to find patentable claim scope

        • Multiple Dependent Claims: may not depend from other multiple dependent claims

        • Combination Claims: “the combination of _(1)_ with _(2)_”

          • Older way of claiming things

          • May run into obviousness issues

      • Means-Plus-Function Elements

        • Cannot have single means claim, you need a combination (i.e., at least two elements) per 35 U.S.C. § 112(6) or 112(f)

        • See Definiteness under Written Description requirement

        • See Equivalents of disclosed structure in Claim Interpretation in Infringement

      • Relation to Written Description Requirement:

        • Unclear terms must be found in the spec

      • Jepson Claims: claiming improvement on works of others (“A __, wherein the improvement comprises __”)

        • Stuff before the improvement is considered prior art or known

      • Negative Limitations

        • Only permitted when there is a proper foundation in the patent specification

        • Sontarus Inc. v. Par Pharmaceutical, Inc. (Fed. Cir. 2012): According to 112(a) written description requirement: negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation

      • Additional information

        • “Wherein” is always attached to an element

      • DUFFY on Claim Scope: when reviewing claims, always think what language/limitations could be taken out (i.e. what narrows it too much?)

• Overview of the Patent System (see slides)

• Globalization and Patent Rights (slide 48, p. 55–67)

  • Late 19th Century: Paris Convention

  • 1970s: Process Consolidation

  • TRIPS: Substantive Harmonization

    • The Patent Term

    • Provisional Applications

    • Eighteen Month Publication of Applications

  • Continuing Evolution

Ch. 2: Patentable Subject Matter - 35 U.S.C. § 101

• 35 U.S.C. § 101: Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and...

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