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Patents Checklist

1952 102(b)
Evidentiary Component
Printed Publication
In Public Use
On Sale
Geographic Component
Temporal Component
>1yr before the application’s
filing date
US Only
AIA 102(a)(1)
Evidentiary Component
Printed Publication
In Public Use
On Sale
Temporal Component
Before effective filing date (with
“Otherwise available to the
1. Presumption of validity- 35 USC §282
2. Indefiniteness
3. Utility
4. Disclosure
a. Enablement
i. Commensurate Scope
ii. Wands Factors
iii. Undue Experimentation
b. Written Description
i. Later-added Claims
c. Best Mode
5. Anticipation
a. Inherency
b. Enablement Standard
6. Novelty/Prior Art
a. Printed Publication
b. On Sale Bar/Pfaff
c. Public Use
i. Or Experimental Use?
ii. Or “secret” use?
7. Obviousness
exception to 102(b)(1): “Grace Period”
made 1yr or less before effective filing date
Disclosures 1yr or less before filing date
aren’t PA if:
1) Disclosure made by the inventor
- PA that originated with applicate
doesn’t count
2) SM disclosed had, b4 such disclosure,
been publicly disclosed by the inventor
- PA from 3rd parties before filing date
doesn’t count only if preceeded by
applicant’s own public disclosure
(incentivices incentive to disclose)
1. Ct. Construes Claims (meat of the
analysis) to determine the scope of the
a. Phillips
2. Qualify the ∆’s activity as a type of act
that could be infringement—271(a)
a. Makes, uses, sells, offers to sell,
imports, within US, during the term
of the patent.
3. Compare claims to qualifying acts
a. Determine whether the ∆’s act
literally infringes any given claim
All elements, single claim
If yes liability for DI
If no, ↓
b. Determine whether the ∆’s act
infringes any given claim under
FWR, element by element
If yes liable for DI
If no  No liability for DI
4. Anyone else involved?
a. Direct Divided
b. Indirect infringement
 Claim Constuction
 Infringement
A. Tests
B. Claim Definiteness
a. Literal
b. DOE
i. PHE
B. Acts of Infringement
a. Direct
b. Direct Divided
c. Indirect
i. Induced &
 Plead/Answer:
A. Non-Infringement
B. Invalidity (Affirmative Defense)
C. Invalidity by Enablement
 Defenses to Infringement
A. Inequitable Conduct
B. Exhaustion
C. Experimental Use
 Eligibility
A. Living SM
B. Abstract Ideas
a. Processes & Software
C. Post-Alice
 Utility
A. Must be minimally operative OR
B. Displays substantial utility, yielding a
specific benefit which exists in
currently available form
 Disclosure
A. Enablement
a. Commensurate scope problems
b. Undue experimentation
problems- Wands Factors
B. Written Description
a. Later-added Claims
b. Claims by Funciton (Ariad)
C. Best Mode
 Remedies
A. Injunctive Relief
a. Preliminary Injunction
B. Damages
a. Treble
b. Attorney’s fee
c. Limitations
 Prior Art/Novelty
A. Loss of Right - § Bars
a. Under 1952 Act
i. Printed Publication
ii. Public Use
iii. Experimental uses &
b. Under AIA
B. Prior Filed Application as PA
a. Pre-AIA
b. Under AIA 102(a)(2), (b)(2),
 Anticipation
A. Inherency
B. Enablement std.
 Obviousness
A. Graham Test
B. Modern Analysis
a. Primary Factors:
i. Scope & Content
ii. Level of ordinary skill
in the art
b. Secondary Characteristics
Claim Construction
A. Intrinsic Evidence
a. Claim Terms- Within the claim itself and in the context of other claims & preamble.
b. Written Description- Drawings & specs
c. Prosecution History
B. Extrinsic Evidence- Expert Testimony, Dictionaries, technical docs, treatises
SM Eligibility- See page 8-9 of outline
A. Is the claim to a process, machine, manufacture, or composition of matter? If no, not eligible
B. Is the claim directed to a law of nature, abstract law, natural product, or physical phenomenon. If
no, Eligible SM
C. Does the claim recite additional elements that “transform” the nature of the claim into patent
eligible SM?
A. Enablement Problems
a. Commensurate Scope
b. Too much undue experimentation- Spec must teach how to make and use without undue
i. Wands Factors- pg 14
1. Quantity of experimentation necessary
2. Amount of direction or guidance presented
3. Presence or absence of working examples
4. Nature of the invention
5. State of the prior art
6. Relative skill of those in the art
7. Predictability or unpredictability of the art
8. Breadth of the claim
B. Written Description
a. Latter-Added Claims- Does WD reasonably convey to POSA that inventor had
possession of the claimed invention as of the filing?
b. Claimed by Function
i. # Species in genus or
ii. Structural features in common to members of the genus
c. Final Test:
i. Possession isn’t exclusive test
ii. Level of detail required varies on the nature & scope of the claims& on the
complexity & predictability of the relevant technology
iii. Factors include the existing knowledge in the particular field, the extent &
content of the prior art, the maturity science or technology, and the predictability
of the aspect @ issue
iv. A description that merely renders the invention obvious does not satisfy the
C. Best Mode Test
a. Did the inventor consider any mode of carrying out the invention to be the “best”?
b. If so, is the disclosure sufficient to enable one of ordinary skill in the art to practice the
inventor’s subjective “best mode” (Clemcas v. Arco)
A. Minimally operative (Swartz)
B. Brenner
a. Display Substantial Utility
i. Practical/real world utility (Fisher)
ii. Determined if POSA would accept something as having utility (Brana)
b. Yielding a specific benefit which exists in currently available form
i. Public benefit (Fisher)
Framework for analyzing Patents over PA
1. What is claimed invention
i. What is alleged PA
ii. What is alleged PA missing
2. Qualify as PA- PP, in public use, on sale, “Otherwise publicly available”(AIA
3. Compare claims to disclosure of PA
i. Any Single PA anticipates?
a. All Elements
b. Single Source
ii. Do they have a defense?
a. Experimental Use
b. Secret Use
iii. Does PA make the invention obvi?
Obviousness test
To Evaluate PA for obvi, look at:
1. Scope & content of PA
2. Difference between PA & claims
o Analogous Art Doctrine- simulates what POSA would consider
Prior art is analogous if:
1. In the same general field of endeavor as claimed invention or
2. Reasonably pertinent to the problem that the claimed invention seeks
to solve
o Teaching, Suggestion, Motivation (KSR)
Patent claim obvious only if some teaching, suggestion, or motivation that
would make POSA think to combine the:
1. PA
2. Knowledge of POSA that certain references or disclosures are of
specific interest in field
3. From nature of the problem to be solved
Common sense as TSM Evidence:
1. Typically invoked to provide a known motivation to combine, not to
supply a missing claim limitation unless the missing limitation is
usually simple & the technology is particularly straightforward
2. Cannot be used as a wholesale substitute for reasoned analysis &
evidentiary support
3. Level of ordinary skill in the art (background of POSA in field, ↑ skill in art ↑likely to prove nonobvi) (Ruiz)
o Ask whether the claimed invention would have been obvi @time made to POSA
Types of problems encountered in the art
PA solutions to those problems
Rapidity with which innovations are made
Sophistication of technology
Education level of active workers in the field
4. Secondary Considerations
o Commercial Success (Calmar & Adams)
o Long felt need met (Calmar)
o Failure of others (to solve problem)
o Initial skepticism toward the invention, followed by acceptance (Adams)
o How to evaluate Secondary considerations (Transocean-nexus required, weirdly used 2°
used to show non-obvi)
Commercial success
Industry praise
Unexpected results
Industry skepticism
Long-felt but unsolved need