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Patent Law Short Outline

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This is an extract of our Patent Law Short Outline document, which we sell as part of our Patent Law Outlines collection written by the top tier of Notre Dame Law School students.

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

Patent Law
Fall 2019
Short Outline Chapter 1: Introduction

4 Chapter 2: Patentable Subject Matter
Introduction to the Patent Act
Natural Laws and Natural Principles
Natural Products and Natural Phenomena
Abstract Ideas

5 5 6 7 7

Chapter 3: Utility
Substantial, Practical, and Specific Utility

8 9

Chapter 4: Disclosure and Enablement
Enablement
The Written Description Requirement
Definite Claims

10 11 12 15

Chapter 5: Novelty under the AIA: 35 USC 102 15
Prior Art under AIA 102 (a): General 16
One-Time-Period Prior Art in 102(a)(1)

17 "Described in a Printed Publication"

17 "Patented"

17 "In Public Use"

18 "On Sale"

19 "Otherwise Available to the Public"

21 Two-Time-Period Prior Art in 102(a)(2): Published US Patent Applications and Issued U.S. Patents 21
"Grace Period" Exceptions under 102(b)
21 102(b)(1): Exceptions for One-Time-Period Art 23 102(b)(2): Exceptions for Two-Time-Period Art 23
The Standard for Anticipation 25
The Identity Requirement 25
Accidental, Unknown and Inherent Anticipations 26
The Enablement Standard for Anticipation 27
Chapter 6: Novelty under Pre-AIA Law
Section 102(b): The General Statutory Bars
Section 102(c ) and (d): Rare Statutory Bars
Novelty (References Tested by Invention Date)
Section 102(a): Publicly Available Prior Art - similar to AIA

1 28 29 30 30 31 Section 102(e ): Disclosures in US Patent Applications
Dates of Invention and Priority
Section 102(g)(1): Determining Priority in Interferences
Section 102(g)(2) and Priority of Invention Outside Interferences
Calculation of Invention Dates Outside of Interferences
Section 102(f): Derivation from Another

31 32 33 36 37 38

Chapter 7: Nonobviousness
Section 103 and the Basic Graham Inquiry
Subtests of Nonobviousness
Obviousness at the Federal Circuit after KSR
Objective Indicia in Obviousness Cases
Commercial Success in Obviousness Cases
Causal "Nexus" Required between Secondary Considerations and
Claimed Invention
The Scope and Content of the Prior Art
The Winslow Tableau
"Prior Art" for Purposes of 103
The Nonanalogous Arts Limitation

39 39 41 42 44 45

Chapter 8: Infringement
Interpreting Claims
Basic Doctrine
Equivalents and Means-Plus-Function Claims
Joint and Divided Infringement
Procedural Aspects of Claim Interpretation
The Doctrine of Equivalents
The Experimental Use "Exception"
Indirect Infringement

50 51 51 54 55 56 57 59 60

Plant Patents

62 Design Patents
Infringement
Claiming
Novelty & Nonobviousness
Ornamentality

64 64 66 68 70

Patent Remedies
Injunctive Relief : Permanent Injunctions
Reasonable Royalties Damages

73 74 75

2 45 46 46 46 50 Lost Profits
Non-infringing Substitutes
The Market Share Rule
Obtaining the Infringer's Profits under Design Patent Law
Obtaining Lost Profits from Overseas Activities
Attorney Fees in Exceptional Cases
Enhanced Damages & Willful Infringement

3 77 78 79 80 81 81 82 I.

Chapter 1: Introduction
A. Historical Overview of Patent Law

1. United States a) Article I, Section 8 authorizes Congress "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries"

2. 35 USC 261: Patents have "the attributes of personal property" but are not property themselves
B. Patent Claim Drafting Exercises

1. Transition a) 'Open' Claims:"Comprising elements A,B,C" = claim covers any embodiment of the invention having the elements A,B,C and any additional elements b) "Closed" Claims: "Consisting of elements A,B,C"
means that a variant that includes A,B,C & D doesn't infringe c) In-between format: "Consisting Essentially Of"
(1)Could cover a variant on the elements only if the added element did NOT make the variant essentially different from the claimed invention (so those with insignificant additions are in the scope, those with significant modifications are not)

2. The Body 4 a) Three Formal Requirements for Claim Drafting
(1)Entire claim must be stated in the form of a single sentence
(2)Claim must set forth how each element interacts with at least one other element
(3)Any internal references must be clear b) Independent and Dependent Claims c) Means-Plus-Function Claims: "Means for doing X" covers the corresponding structure, material, or acts described in the specification and equivalents (it covers many but not all means)
(1)Can only be used in combo with at least one other element
C. Overview of Patent Rights and Patent Process

1. Patent Process a) Apply b) PTO examiner negotiates with you c) Afterwards, you can seek a reissue (if you think claims were too narrow) or anyone can seek a reexamination
(1)3 AIA proceedings that allow patent challenges to challenge validity: Inter Partes
Review, Post-Grant Review, Covered BusinessMethod
(2)No presumption of validity here d) All decisions made during examination are subject to review by PTAB (and then by Fed Cir or commencing a civil action in DC against director of
PTO)

2. Judicial Actions: Infringement and Declaratory Judgment
Suits a) Once patent has been issued, lawsuits can arise in two ways
(1)Patentee brings infringement action against accused infringer
(2)Potential infringer files a declaratory judgment action against patentees (to challenge validity of patent rather than waiting to be sued by patentee)

5 II.

(a) Can file this when there is a "reasonable apprehension of a lawsuit"
b) Patents enjoy presumption of validity here
Chapter 2: Patentable Subject Matter
A. Introduction to the Patent Act

1. General a) Section 101: "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 requirements of this title."
b) Patentability issues treated as threshold issues to be decided by PTO and courts early in their processes

2. Diamond v. Chakrabarty (1980)
a) Issue: whether a live, human-made microorganism is patentable subject matter under 101 b) Patentee could claim the bacteria because the distinction is not between living and nonliving but is between products of nature vs. manmade (bacteria was man-made)
c) Court holds that 101 uses broad terms, and thus
Congress contemplated the laws would have broad scope. But there are limits:
(1)The three judicially created limits
(a) Laws of nature
(b)Physical phenomena
(c) Abstract ideas d) Something doesn't necessarily need to be explicitly declared patentable by Congress to be patentable e) Whether a subject matter is patentable cannot depend on whether it would be good policy or not f) Dissent

3. Bilski v. Kappos (2010)
a) Method for hedging risks → put into math formula b) REJECTS Machine or transformation test: which says that an invention is only a process if (1) it is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing 6

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