Patent Subject Matter Outline

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?

  • 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

     1. process

     2. machine

     3. manufacture

     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

   • 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]

   • 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)

   • 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;

   • (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

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)

  • Come at the end of the written description of the invention (most also have drawings)

• Specification describes the invention:

  • name all parts or components of the invention,

  • describe how they work,

  • 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

• 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

  • Therefore,

    • 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:

  • Inventor: always individual(s) (not the company, even if it would own the rights)

  • Assignee,

  • Title,

  • Abstract,

  • Patent examiner and lawyer,

  • Classification of industry/ field,

  • ‘Prior art’ - related/ relevant patents, drawing, specification

    • Previously submitted models of invention when filing for a patent now only drawing

  • Specification

  • 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...

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