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Patents Checklist

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1952 102(b)

Evidentiary Component

Patented

Printed Publication

In Public Use

AIA 102(a)(1)

On Sale

Evidentiary Component

Patented

Printed Publication

In Public Use

On Sale

“Otherwise available to the public”

Geographic Component

Worldwide

US Only

Invalidity

1.

Presumption of validity- 35 USC §282

2.

3.

4.

Indefiniteness

Utility

Disclosure a.

Enablement

5.

i.

ii.

Commensurate Scope

Wands Factors iii.

Undue Experimentation

Written Description b.

c.

Anticipation i.

Later-added Claims

Best Mode

6.

7.

a.

b.

Inherency

Enablement Standard

Novelty/Prior Art a.

Printed Publication b.

c.

On Sale Bar/

Public Use i.

ii.

Pfaff

Or Experimental Use?

Or “secret” use?

Obviousness

Infringement

A.

Tests

Temporal Component

>1yr before the application’s filing date

Geographic

Component

Worldwide

Temporal Component

Before effective filing date

(with 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 3 rd

parties before filing date doesn’t count

only if preceeded

by applicant’s own public disclosure

(incentivices incentive to disclose)

Infringement

1.

Ct. Construes Claims (meat of the

2.

3.

4.

analysis) to determine the scope of the patent a.

Phillips

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.

Compare claims to qualifying acts a.

Determine whether the ∆’s act b.

literally infringes any given claim

All elements, single claim

If yes

liability for DI

If no, ↓

Determine whether the ∆’s act infringes any given claim under

DOE

FWR, element by element

If yes

liable for DI

If no

No liability for DI

Anyone else involved? a.

Direct Divided b.

Indirect infringement

Claim Constuction

A.

CC

1

B.

a.

b.

Literal

DOE i.

PHE

Acts of Infringement a.

b.

c.

Direct

Direct Divided

Indirect i.

Induced &

Contributory

B.

Claim Definiteness

Eligibility

A.

B.

Living SM

Abstract Ideas a.

Processes & Software

C.

Post-Alice

Plead/Answer:

A.

Non-Infringement

B.

C.

or:

Invalidity (Affirmative Defense)

Invalidity by Enablement

Defenses to Infringement

A.

Inequitable Conduct

B.

C.

Exhaustion

Experimental Use

Utility

A.

B.

Must be minimally operative OR

Displays substantial utility, yielding a specific benefit which exists in currently available form

Remedies

A.

Injunctive Relief a.

Preliminary Injunction

B.

Damages a.

b.

c.

Treble

Attorney’s fee

Limitations

Disclosure

A.

Enablement a.

Commensurate scope problems b.

Undue experimentation problems-

Wands

Factors

B.

C.

Written Description a.

b.

Later-added Claims

Claims by Funciton (

Ariad)

Best Mode

Prior Art/Novelty

A.

Loss of Right - § Bars a.

Under 1952 Act i.

ii.

iii.

Printed Publication

Public Use

Experimental uses &

B.

b.

sales

Under AIA

Prior Filed Application as PA a.

Pre-AIA b.

Under AIA 102(a)(2), (b)(2),

Anticipation

& d

A.

B.

Inherency

Enablement std.

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

Obviousness

A.

Graham

Test

B.

Modern Analysis a.

Primary Factors: i.

ii.

Scope & Content

Level of ordinary skill in the art b.

Secondary Characteristics

2

B.

c.

Prosecution History

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.

C.

Is the claim directed to a law of nature, abstract law, natural product, or physical phenomenon. If no, Eligible SM

Does the claim recite additional elements that “transform” the nature of the claim into patent eligible SM?

Disclosure

A.

Enablement Problems a.

Commensurate Scope b.

Too much undue experimentation- Spec must teach how to make and use without undue experimentation i.

Wands

1.

Factors- pg 14

Quantity of experimentation necessary

B.

C.

c.

2.

3.

4.

5.

Amount of direction or guidance presented

Presence or absence of working examples

Nature of the invention

State of the prior art a.

6.

7.

Written Description

8.

Relative skill of those in the art

Predictability or unpredictability of the art

Breadth of the claim

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

Final Test: i.

Possession isn’t exclusive test ii.

Level of detail required varies on the nature & scope of the claims& on the iii.

complexity & predictability of the relevant technology

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 requirement

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)

Utility

A.

B.

Minimally operative (

Swartz)

Brenner

a.

Display Substantial Utility i.

Practical/real world utility (

Fisher)

b.

ii.

Determined if POSA would accept something as having utility (

Brana)

Yielding a specific benefit which exists in currently available form i.

Public benefit (

Fisher)

3

Framework for analyzing Patents over PA

1.

What is claimed invention i.

ii.

What is alleged PA

What is alleged PA missing

2.

3.

Qualify as PA- PP, in public use, on sale, “Otherwise publicly available”(AIA

Compare claims to disclosure of PA i.

Any Single PA anticipates? a.

b.

All Elements

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 i.

Prior art is analogous if:

1.

In the same general field of endeavor as claimed invention

or

o

2.

Reasonably pertinent to the problem that the claimed invention seeks to solve

Teaching, Suggestion, Motivation (

KSR)

4

3.

4.

i.

ii.

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

2.

usually simple & the technology is particularly straightforward

Cannot be used as a wholesale substitute for reasoned analysis & evidentiary support

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 i.

ii.

Types of problems encountered in the art

PA solutions to those problems iii.

iv.

Rapidity with which innovations are made

Sophistication of technology v.

Education level of active workers in the field

Secondary Considerations o

Commercial Success (

Calmar & Adams)

o o

Long felt need met (

Calmar)

Failure of others (to solve problem) o o

Initial skepticism toward the invention, followed by acceptance (

How to evaluate Secondary considerations

(Transocean-

Adams)

nexus required, weirdly used 2

° used to show non-obvi) i.

Commercial success ii.

iii.

Industry praise

Unexpected results iv.

v.

vi.

vii.

Copying

Industry skepticism

Licensing

Long-felt but unsolved need

5

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