Someone recently bought our

students are currently browsing our notes.


Patent Subject Matter Outline

LLM Law Outlines > Intellectual Property (IP) Law Outlines

This is an extract of our Patent Subject Matter document, which we sell as part of our Intellectual Property (IP) Law Outlines collection written by the top tier of NYU School Of Law students.

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


09. Patent: Subject Matter
MML 156-68 [skim], 275-95, 297-98 [note 6], 304-12, 313-16; 35 U.S.C. § 101
Factors Bearing on Patent Protection
- Patent incentive v competition and idea dissemination

Other inventive that encourage innovation: trade secrets, market structures, government grant
(esp. researches)
- Importance of protection to the industry
- Other incentives to invent despite patent protection
- Cost of research and development
- Intent of inventor

People often invent things accidentally (e.g. post-it notes, pacemaker)  should we still give them reward?
- Reward idea or its commercialization?
o Selling it and inventing it  same or different rights
- Simultaneous development

Telephone, Steamboats  two patent filed in the same period
- Ease of copying

3D printing  how easy to copy?
- Product cycle

Some areas turn very quickly, e.g. software, so patent protection doesn't last long
- Cumulative or independent nature of innovation
- Importance of disclosure
Requirements for Patentability P.161
Patent and Trademark Office (PTO) reviews each patent application on 5 requirements:
- Patentable Subject matter s.101 1) one of four statutory categories; or




4.composition of matter 2) improvement thereof
 not excluded by judicial doctrines barring patents on law of nature, natural phenomena and abstract ideas

1. Utility s.101

Invention must be useful in 2 aspects:

1. credible utility: must work for its intended purpose

2. specific and substantial utility: must serve a particular practical purpose

even if the invention works only in an experimental setting + has no proven use in the field or factory

Would only deny patent when an invention has absolutely no practical utility
 Exception: invention pertaining to life sciences, whether laboratory promise is enough to establish utility in treating human patients

2. Novelty s.102

invention has not been preceded in identical form in the public prior art

1 Patent evaluated based on technical rules aimed at determining whether the claimed invention was in the prior art

For application filed prior to March 16, 2013, US patent favors the first applicant to invent, so long as the invention was timely filed

For application filed after March 16, 2013, US patent favors first applicant to have filed,
subject to a grace period for prior publication

3. Nonobvious s.103 [most important]
o Non-trivial extension: whether an invention is a big enough technical advance over the prior art (no patent if merely trivial step, even if invention is new and useful)
o Attempt to measure technical accomplishment reflected in an invention

4. Disclosure s.112

(1) written description of the invention: demonstrated possession as of the time of filing the application;
o (2) enablement: specification enable a person having ordinary skill in the art to make and use the invention

Ensures that the patentee has fulfilled the social bargain underlying the patent agent - the skilled in the art of the invention can be read and understand the inventor's contribution; after patent expire, they will be able to make and use the invention themselves o

Rights conferred by a Patent
- Claims define the boundaries of the property right that the patent confers

Dependent Claim: incorporates all the limitations of the independent claim on which it depends (c.f. Independent Claims)
o Come at the end of the written description of the invention (most also have drawings)
- Specification describes the invention:
o name all parts or components of the invention,
o describe how they work,
o illustrate how they work together to perform the invention's function

state the precise legal definition of the invention (at the end)
- A patent confers right to exclude others from making, using, selling, offering for sell, or importing the claimed invention for 20 years from the filing of the patent application

patent does not automatically grant an affirmative right to do anything

patented invention may itself be covered by a preexisting patent  blocking patents:
 holder of an improvement patent has right to exclude everyone from her improvement, including the holder of the board patent; but
 improved patent holder is barred from use of the improvement unless the broad patent holder authorises such use
Development history
- 1980s divergent amongst different courts  1982 designated court
- Supreme court take case when there is an important issue/ federal circuit court did something significantly wrong
- 1994: WTO requirement to enact more patent protection
Theories of Patent Law P.167
- Inventions are public goods that are costly to make and that are difficult to control once they are released into the world

2 Patent-

Patent protection (economic benefits) gives inventors incentive to invest in creating, developing and marketing new products
Utilitarianism Patent Theory

Maximizing innovation:
 Balance incentive to innovate against
 Use of innovation and follow-up innovation

 Giving innovators incentive
 to invent while balancing this against the cost to the public of not being able to use that invention feely and to innovators who want to build on that earlier innovation.
 Disclose new inventions
Patent gives inventor the right to sue those who 'steal' his invention + those who reverse engineer it +
those who develop the same invention independently

Patent Format
- Content:
o Inventor: always individual(s) (not the company, even if it would own the rights)
o Assignee,
o Title,
o Abstract,
o Patent examiner and lawyer,
o Classification of industry/ field,
o 'Prior art' - related/ relevant patents, drawing, specification
 Previously submitted models of invention when filing for a patent  now only drawing


Claims: list of necessary elements that constitute the invention
 Very technical format
 E.g. cheese slicer  (1) rotating handle at end of bar + (2) u-shaped bar + (3) base with passageway + (4) cutting element attached to bar
 Own everything you claim but ONLY what you claimed
 Patent holders would want to claim as broadly as they can
 E.g. claiming a laser:
 A laser comprising a chamber having end reflective parallel members and side members, a negative temperature medium disposed within said chamber,
and means arranged about the said chamber for pumping said medium, said side members being transparent to the pumping energy and transparent to or absorptive of other energy radiated thereat  Means and function (look to specification)
Patent Life Cycle
- Patent Prosecution: Process of obtaining a patent from the Patent Office

US Patent Application submit to pattern office to examine the merit of patentability, ~18 hours)  Applicant and Patent office would communicate  to amend/ argue

Basics of filing an application:
 (1) specification (including a summary of the invention and drawings);

Buy the full version of these notes or essay plans and more in our Intellectual Property (IP) Law Outlines.