PATENTS OUTLINE
Prof. Schatzel, Santa Clara University School of Law, Spring 2007; written by Joseph J. Wang, joew10@yahoo.com; use Shift-Ctrl-8 to view hidden text.
I. Procedures Before USPTO
A. Rationales for Patent System
1. Incentive to Invent
2. Incentive to Disclose - to public
3. Incentive to Commercialize
4. Incentive to Design Around
B. Application
1. Inventors. 35 USC §116
a) Whoever contributed to any element of any claim is a co-inventor
2. Specification = Written Description + Claims + Drawings (if necessary)
3. Declaration or Oath
a) Inventors swear invention is their work
b) Disclose all known prior art
4. Filing Date
a) If USPS Priority Mail, date of Mailing
b) Else, date of Receipt
C. Examination & Prosecution
1. Publication - 18 months from filing
2. Office Action - 2½ to 4 yrs from filing
a) Response
3. Final Office Action
a) Abandon
b) Appeal
(1) First to BPAI
(2) Then to D.C.D.C., or directly to Fed. Cir. Ct. of App.
(a) 28 USC §1295 - Fed. Cir. has jurisdiction over:
(i) Appeals from BPAI, and
(ii) Appeals from district courts if their jurisdiction was based on 28 USC §1338 (patents)
c) Cancel claims
4. Continuation
5. CIP
a) Old subject matter gets old filing date
b) New subject matter gets new filing date
6. Divisional
a) Response to Restriction Requirement
7. Notice of Allowance
D. Issuance
1. Presumption of validity. 35 USC §282
a) Requires clear and convincing evidence to invalidate
E. Post-Issuance
1. Certificate of Correction. 35 USC §254, §255
a) §254 - USPTO error
b) §255 - Applicant's good-faith error
2. Correction of Named Inventor. 35 USC §256
3. Disclaimer. 35 USC §253
4. Reissue. 35 USC §251, §252
a) Three Requirements for Error:
(1) Invalidates - at least part of patent
(2) Unintentional or Unavoidable
(3) Without Deceptive Intent
b) Broadening claims ok within 2 yrs. Else, can only narrow claims
(1) Recapture Rule - no recapture of claims surrendered to get patent.
(2) Intervening Rights - infringer of reissue, but not of original patent, may continue
(a) No such right if original claim is substantially same as reissued claim.
5. Reexamination. 35 USC §301-§305
a) Ex Parte or Inter Partes
b) 37 CFR §1.510(b) requirements:
(1) New Question of Patentability - new prior art reference
(2) Application of cited prior art to each claim
(3) Copy of cited prior art
(4) Copy of patent
(5) If requestor is non-owner, a Certification that a copy of request has been served
to owner
c) Cannot broaden claims. New prior art can only narrow claims
d) Requestor is estopped from raising any prior art not raised in re-exam
6. Life of Issued Patent
a) After June 8, 1995: 20 yrs from date of Filing
b) Before June 8, 1995: 17 yrs from date of Issue
c) Hatch-Waxman Act. 35 USC §156
(1) Allows extension for patents on human drugs, medical devices, food additives
7. Owners & Assignees. 35 USC §261
a) Patents are personal property
b) All co-owners have full power to license entire patent
c) All co-owners must agree to sue for infringement, unless otherwise agreed
per written contract
II. 35 USC §112 - Specification Requirements
A. Written Description - ¶1
1. Test: Applicant possessed invention at time of filing
a) A drawing can suffice to support claims.
b) Must describe particular species of interest.
2. Question of Fact
B. Enablement - ¶1
1. Test: POSIA can make & use without Undue Experimentation
a) Enablement is judged as of Filing date.
b) Undue Experimentation factors :
(1) Quantity of Experimentation Necessary
(2) Amount of Direction or Guidance Presented
(3) Presence or absence of Working Examples
(4) Nature of invention
(5) State of Prior Art
(6) Relative Skill of POSIA
(7) Predictability or Unpredictability of art
(8) Breadth of Claims
2. Question of Law
C. Best Mode - ¶1
1. Two-element Test:
a) Inventor Knew a best mode at time of Filing [subjective]
(1) No violation if inventor did not know a best mode.
b) Adequate Disclosure Enabling POSIA to make & use best mode [objective]
(1) No need to disclose commercial considerations or routine details.
2. Question of Fact
D. Definiteness - ¶2
1. Test: Claim is clear to POSIA, particularly points out and distinctly claims
a) If equal choice between broad or narrow meanings of a claim, the narrow
meaning is used.
2. Question of Law
3. Policy:
a) Give public notice of patent boundaries
b) Distinguish invention over prior art
III. 35 USC §102 - Statutory Bars & Novelty Requirement
No patent if . . .
Who
What
Where
When
3rd party
knew or used invention
US
before date of invention
3rd party
patented or described invention in printed publication
anywhere
before date of invention
anybody
patented or described invention in printed publication
anywhere
more than 1 year before filing
anybody
sold, offered to sell, or publicly used invention
US
more than 1 year before filing
c
inventor
abandoned invention
US
anytime
d
inventor
filed for foreign patent that issued before US filing
anywhere
more than 1 year before filing
e
3rd party
filed US application that ultimately issued, or
filed PCT application later published in English
anywhere
before date of invention
f
inventor
derived invention from 3rd party
anywhere
before date of invention
g
3rd party
invented the same invention
US
before date of invention
a
b
A. Statutory Bars - Loss of Right
1. §102(b) Patent or Printed Publication; Public Use; On-Sale Bar
a) Test: Patented or Described in a Printed Publication over 1 year before filing
(1) Public Accessibility Test: Reasonably available to the interested public
(a) Indexed and cataloged, so accessible.
(b) No index or catalog, not accessible.
(c) Question of Fact
(2) "Printed publication" is Question of Law
b) Test: Public Use in US over 1 year before filing
(1) Unrestricted (w/o NDA) use by anyone bars inventor only
(2) Experimental Use is an affirmative defense
(a) Non-commercial
(b) Controlled by patentee - restricted, under NDA
(c) Data-gathering
c) Test: On-Sale in US over 1 year before filing
(1) Subject of a commercial sale or offer for sale
(2) Ready for patenting
(a) Reduced to practice, or
(b) Drawings/description sufficient to enable POSIA to make & use
d) Question of Fact
e) Policies:
(1) Do not remove inventions that public justifiably believes are public domain
(2) Prompt disclosure of invention to public
(3) Prevent inventor from extending statutory life of patent
(4) Give inventor time to test market
2. §102(c) Abandonment
a) Test: Inventor abandoned invention (at any time prior to issuance)
b) Question of Fact
3. §102(d) Foreign Filing & Patent
a) Two-element Test:
(1) Inventor Filed for foreign patent over 1 year before US filing
(2) Foreign Patent issued before US filing
b) Question of Fact
B. Novelty
1. Anticipation: that which literally infringes if later, anticipates if earlier
a) Identity Requirement - single reference has each and every limitation
b) Anticipatory Enablement - enables POSIA to possess invention
c) Question of Fact
2. §102(a) Anticipation
a) Test: Known or Used (publicly) by Others in US before invention
(1) Secret use by others does not invalidate.
b) Test: Patented or Described in Printed Publication before invention
(1) Exclusive rights to invention count as "patented."
(2) Public Accessibility is a Question of Fact
(3) "Printed Publication" is a Question of Law
c) Question of Fact
3. §102(e) Anticipation by Stealth Art
a) Test: US application becomes prior art when Published
(1) Effective date is US filing date
b) Test: PCT application becomes prior art when Published in English
(1) Effective date is PCT filing date
c) Question of Fact
4. §102(f) Derivation
a) Two-element Test:
(1) Prior Conception
(a) Conception Test: invention was clear enough to enable POSIA
(b) Conception cannot be proven by inventor testimony alone. Corroboration needed
(c) Question of Law based on Fact
(2) Communication to applicant / patentee
(a) Communication Test: sufficient to enable POSIA
(b) Question of Fact
b) Question of Fact
5. §102(g) Priority
a) Test: Someone else in US reduced invention to practice first, and did not
abandon, suppress, or conceal
(1) Exception: Reasonable Diligence
(a) From time prior to conception by 2nd inventor to reduction to practice by 2nd inventor
(b) §104 Foreign activities (except NAFTA or WTO) cannot prove inventive activity
(2) Actual Reduction to Practice
(a) Test: invention actually worked for its intended purpose.
(b) Question of Law
(3) Constructive Reduction to Practice - when patent application is filed
(4) Corroboration required where inventor stands to gain by establishing priority
(a) Affidavit per 37 CFR §132 lets inventor "swear behind" prior art
(5) "Abandon, Suppress, or Conceal" is a Question of Law based on Fact
b) Question of Law
IV. 35 USC §103 - Non-Obviousness Requirement
A. Test: Difference between invention and prior art is obvious to
POSIA. Graham v. John Deere
1. Prior art must be Analogous (pertinent)
a) Two-prong Test:
(1) Same Field, regardless of problem addressed, or
(2) Reasonably pertinent to Same Problem
b) Prior art for one purpose is prior art for all purposes
c) Question of Fact
2. Surprising and unexpected results.
a) Unexpected by POSIA as of date of invention
(1) Structural similarity creates a prima facie case of obviousness.
(a) No requirement that prior art suggest similar utility, only similar structure
b) Question of Fact
3. Obvious to POSIA, not to patentee. KSR v. Teleflex, Apr 30, 2007
a) Obvious if prior art docs Teach, Suggest, or Motivate POSIA to make
invention, and have a reasonable expectation of success
(1) Obvious if obvious-to-try. KSR, Apr 30, 2007, overruling O'Farrell
b) POSIA - Ordinary Skill Factors
(1) Educational level of Inventor
(2) Problems encountered in art
(3) Solutions in prior art
(4) Rapidity in which innovations are made
(5) Sophistication of technology
(6) Educational level of workers in field
(7) Ordinary Creativity [added by KSR, Apr 30, 2007]
4. Secondary Considerations must be weighed, if in evidence
a) Commercial Success
(1) Nexus between merits of invention and commercial success
b) Long-felt Need
(1) Enduring unmet need unsolved by others
c) Failure of Others
(1) Different approaches did not work, or
(2) Experts taught away from invention
d) Licensing / Acquiescence
(1) Nexus between merits of invention and licenses
(a) Licensees favor patentee, unless they licensed for business reasons only
e) Copying
(1) Failed attempts to design around patent
B. Question of Law based on Fact.
V.
35 USC §101 - Utility / Usefulness
A. Two-Step Test
1. USPTO has burden to show POSIA would reasonably doubt utility
2. Then, Applicant has burden to prove Public Benefit
a) No requirement to wait for natural occurrence of human disease.
b) No requirement for actual human testing.
VI. 35 USC §§100,101 - Statutory Subject Matter
A. Process, Machine, Manufacture, or Composition of Matter
1. Process means…
a) process, art, or method and includes…
b) a new use of known process, machine, manufacture, composition of matter,
or material. §100
B. "Anything under the sun that is made by man." Diamond v.
Chakrabarty
1. "Useful, concrete and tangible result."
a) Using a computer to solve a problem.
b) Displaying electrical signals on a raster.
c) Business methods. State Street Bank
2. Not patentable
a) Laws of Nature. Physical phenomena. Abstract ideas.
b) Algorithms.
C. Question of Law
VII. 35 USC §§154, 271 - Infringement
A. Claim Construction - Markman Hearing
1. Judge uses Intrinsic documents first
a) Claims + Specification + Prosecution History
2. Judge uses Extrinsic evidence only if intrinsic evidence is ambiguous
3. Question of Law
B. Doctrine of Equivalents - DOE
1. Triple Identity Test:
a) Same Function +
b) Same Manner +
c) Same Result
(1) Evaluated at time of alleged Infringement, not at time patent issued
(2) Evaluated element-by-element, not on claim as a whole
(3) Intent to infringe is not required.
2. Rationales
a) Infringer should not get away with insubstantial substitutions
b) Limits of English language should not create loopholes
3. Whether DOE applies is a Question of Law
4. Equivalence of an element is a Question of Fact
C. Prosecution History Estoppel - Festo
1. Narrowing amendments presumptively create PHE
a) DOE is barred only with respect to equivalent elements surrendered
b) Patentee has burden to show amendment was not for securing patent
2. DOE may apply to equivalent elements not surrendered
a) Patentee has burden to show an amendment does not surrender a particular
equivalent element
b) An equivalent is not surrendered if:
(1) Unforeseeable at time of filing, or
(2) Reason for amendment was only tangential to the equivalent, or
(3) Patentee could not reasonably be expected to have described the equivalent
D. 35 USC §271(a) - Direct Infringement
1. "makes, uses, offers to sell, or sells… or imports"
a) No Statute of Limitations. Remedy limited to 6 yrs prior to suing
b) Notice is not required for infringement, but required for damages
E. 35 USC §271(b) - Active Inducement to Infringe
1. Two-element Test:
a) Direct Infringement
b) Actual Intent to induce infringement
F. 35 USC §271(c) - Contributory Infringement
1. Two-element Test:
a) Knowledge of Direct Infringement
b) Sale, Offer to sell, or Importation of Material Non-Staple Component
G. 35 USC §271(f) - Exporting Components of Patented Invention
1. §271(f)(1) Direct infringement to…
a) Knowingly ship abroad a…
b) Substantial portion of components
2. §271(f)(2) Contributory infringement to…
a) Knowingly ship abroad a…
b) Material non-staple component
H. 35 USC §271(g) - Importing Products Made by Patented Process
1. Importing is direct infringement…
a) Unless…
(1) Product was materially changed by subsequent process, or…
(2) Product became a nonessential component of another product
b) Materiality is technical, not economic
(1) A change in product value is not required for materiality
I. Infringement is a Question of Fact
1. Standard at trial: preponderance of evidence (not clear & convincing)
VIII. Defenses
A. 28 USC §2201 - Declaratory Judgment Act
1. "a substantial controversy, between parties having adverse legal interest,
of sufficient immediacy, and reality to warrant relief." Medimmune
a) Licensees may sue to invalidate, while paying royalties. Lear v. Adkins
2. Standing requires:
a) Reasonable Apprehension of suit; and
b) Sufficient Interest
B. Invalidity
1. 35 USC §282 - Presumption of Validity - Defendant must overcome by
clear and convincing evidence
C. Non-infringement
1. Patent owner has burden to prove infringement by preponderance
D. Inequitable Conduct
1. 37 CFR §1.56 - Duty of Candor
2. Two-factor Sliding Scale Test:
a) Deceitful intent
(1) Gross negligence is not sufficient to find IC.
b) Materiality
(1) Not of record; and
(2) Inconsistent with applicant's argument on patentability. 37 CFR §1.56(b)
3. Entire patent is unenforceable, even if only 1 claim affected
4. Question of Law (Equity)
a) Standard at Trial: decision by judge (on clear and convincing evidence)
b) Standard on appeal: clear error
E. 35 USC §271(d) - Misuse
1. Patent owner may not use patent to extend scope of monopoly
a) Patent owner must give notice of any restrictions (e.g. "single use only")
(1) But no post-expiration royalties as condition to licensing!
2. No misuse if patent owner:
a) Derived revenue from acts that would be contributory infringement; or
(1) E.g. sold a non-staple material component.
b) Authorized acts that would be contributory infringement; or
c) Sued for infringement or contributory infringement; or
(1) Enforcing patent is ok.
d) Refused to license, or refused to use, patent rights; or
e) Conditioned license or sale on licensing another patent or purchase of
another product, unless the patent owner has market power
F. Anti-Trust
1. Walker Process Fraud - very bad misrepresentation, worse than IC
a) Two-element Test:
(1) Deceitful intent (in withholding a prior art reference); and
(2) Materiality (of that reference)
b) No sliding scale, unlike Inequitable Conduct
2. "Sham" Lawsuit
a) Objectively baseless; and
b) Subjectively motivated to cause anti-competitive injury (bad faith)
G. First Sale
1. Buyer of patented item gets implied authority to use and resell the item
H. Implied License
1. Two-element Test:
a) No non-infringing uses for equipment involved
(1) Must be commercially viable
(2) May be in other markets
b) Circumstances of sale "plainly indicate… a license should be granted"
(1) Defendant must show reliance on patent owner's conduct prior to infringement
I. Repair, and not Reconstruction
1. Repair is allowed
a) A spent part is replaced.
b) A non-spent part is replaced to change the machine's function
2. Reconstruction infringes
a) Entire patented item is spent and replaced
J. Lack of Notice - see §287 Notice Requirement, infra
K. State Laws Protecting Trade Secrets
1. Not pre-empted by federal patent law.
L. 35 USC §273 - First Inventor Defense Act
1. Three-element Test:
a) Business Method
b) Reduced to Practice over 1 year before Filing date of patent
c) Commercial Use before Filing date of patent
M. 35 USC §271(e) - Experimental Use
1. "solely for uses reasonably related to the development and submission of
information [to FDA, etc.]"
a) Trade shows. Investor demos. But not research on new unpatented drugs.
b) Purpose of submission may not be to get approval for commercial
manufacture, use, or sale prior to expiration of patent
N. Governmental Immunity
1. Federal Agencies
a) 28 USC §1498
(1) Federal Court of Claims has exclusive jurisdiction
(2) No injunctions. Reasonable compensation only
b) Two-element Test for Federal Contractors: Sevenson
(1) Use is "for the Government"
(2) Use is expressly "with the authorization and consent of the Government"
2. State Agencies
a) USCONST 11th Am - States' sovereign immunity from federal courts
(1) Immunity may be waived if State initiates suit
IX. Remedies
A. 35 USC §284 - Damages
1. Damages = greater of (Adequate Compensation) or (Reasonable Royalty)
2. Lost Profits
a) "But For" Test - But for the infringement…
(1) What would customers have done?
(a) Demand for product
(b) Absence of acceptable Substitutes
(2) What would patent owner have done?
(a) Capacity to meet demand
(b) Profit
(3) What would infringer have done?
(a) Non-infringing Substitute, available at time of infringement
b) Question of Fact
3. Reasonable Royalty
a) Hypothetical Approach - 15 factor test from Georgia-Pacific
(1) Royalties received already
(2) Royalty rate for comparable patent
(3) Exclusive or non-exclusive license
(4) Patent owner's policies on licensing
(5) Relationship between patent owner and infringer
(6) Value of patent in driving sales on other products
(7) Remaining life of patent
(8) Profitability
(9) Advantages of patent over existing products or methods
(10) Nature of invention; Importance to licensor; Benefits to users
(11) Extent of use by infringer
(12) Industry custom in apportioning profits on similar inventions
(13) Portion of profit due to invention
(14) Expert testimony
(15) Royalty willing parties would have agreed upon
b) Analytical Approach
(1) Infringer's profit margin
(2) Reasonable percentage of profits to pay as a license fee
B. Limitations on Damages
1. Foreseeability - Objective Test for Proximate Cause
a) "Adequate" compensation not limited to patented item, if "but for" test is met
b) Question of Law
2. Entire-Market-Value Rule
a) Apportionment
(1) If patented feature is only part of a product, and…
(2) If the patented feature is the basis for customer demand, then…
(3) Entire-Market-Value is used to compute damages
b) Complementary Products
(1) If patented product drives sales of related products, and…
(2) If the related products function with the patented product to produce a desired
end product or result, then…
(3) Entire-Market-Value of all products is used to compute damages
3. 35 USC §286 - Six-Year Rule
a) No Statute of Limitations on infringement claims, but…
b) Damages older than 6 yrs are barred
4. Laches
a) Unreasonable Delay in filing suit after plaintiff should have known claim, and
b) Material Prejudice to defendant
5. Equitable Estoppel
a) Misrepresentation by plaintiff, and
b) Reliance by defendant
6. 35 USC §287 - Notice Requirement
a) Actual Notice of Patent
(1) Sending defendant letter naming patent
b) Constructive Notice of Patent
(1) Placing patent number on the patented product
(a) Not the packaging!
(b) Falsely using "Pat. Pending" lets competitors sue for unfair business practice
c) Actual Notice of Infringement - defense to willfulness
(1) Filing complaint, or
(2) Cease-and-desist letter or demand letter (for royalties)
C. Interest
1. Interest on Pre-Judgment infringement
a) Three-factor Calculation:
(1) Principal Amount
(a) Compensatory damages from date of infringement. No punitive damages
(2) Interest Rate
(a) Investment rate of return on which patent owner missed out, or
(b) Loan interest rate at which patent owner was forced to borrow
(3) Accrual Method
2. Interest on Post-Judgment delay of payment
a) Regulated by statute, 28 USC §1961
(1) Accrues from date of entry of judgment to date of payment
(2) Rate is based on 52-week T-bills, compounded annually
D. 35 USC §283 - Injunctions
1. "in accordance with the principles of equity" Research In Motion
2. Permanent Injunctions
a) Four-element Test: Ebay v. MercExchange
(1) Irreparable Harm
(2) Inadequacy of Damages
(3) Balance of Hardships
(4) Public Interest
3. Preliminary Injunctions
a) Four-factor balancing Test:
(1) Likelihood of Success on the merits
(a) Proving infringement AND OVERCOMING ALL POSSIBLE DEFENSES
(2) Irreparable Harm
(3) Balance of Hardships
(4) Public Interest
b) Plaintiff must post a bond to compensate defendant, in case judge is wrong
4. Stay of Injunction Pending Appeal - rarely granted after 1992
a) Four-factor balancing Test:
(1) Likelihood of Success on the merits (of appeal)
(2) Irreparable Harm
(3) Balance of Hardships
(4) Public Interest
E. 35 USC §284 - Punitive Damages
1. Court may increase damages up to 3x
2. Two-step Analysis:
a) Clear and convincing evidence of Willfulness
(1) Good faith. Due inquiry
(2) Legal Opinion Letters must be thorough, competent, and objective
b) Totality of the evidence justifies increasing damages
F. 35 USC §285 - Attorney's Fees
1. Three-element Test:
a) Exceptional Case
(1) Clear and convincing evidence of exceptional conduct by infringer or patentee
b) Reasonable Fee
(1) Lodestar Amount = Reasonable Rate x Reasonable Hours
(2) Court may adjust
c) Prevailing Party
(1) Party has "prevailed on merits of at least some of his claims"
(2) Court has discretion
2. 28 USC §1927 - Counsel's liability for excessive costs
3. FRCP Rule 11 - Representations to court
a) Attorney certifies all positions are well-grounded in fact
(1) Complaint must state statutory basis for:
(a) Cause of action - 35 USC §271 (infringement)
(b) Personal jurisdiction
(c) Subject matter jurisdiction - 28 USC §1338 (patents)
(d) Venue
b) Court has discretion to grant / deny sanctions