Patents Under U.S. Law
© 2006 David W. Opderbeck
Patents -- Introduction
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Overview
– Protection: utility inventions, designs, asexually
reproduced plants
– Utility patent available for inventions that are new,
useful and non-obvious
– Protection is entirely dependent on the formalities –
there is no patent protection without a patent
document
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Why should this be so?
– Any making, using, selling or offering for sale of the
patented invention protected; No need to prove
copying, “substantial similarity,” or consumer confusion
– Term of protection is limited: basically, 20 years from
date of application
Patents
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Application Process
– Patents are awarded to the first inventor
– No work for hire doctrine
– Application is filed and then Patent Office
Examines it
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May reject for lack of novelty or utility or for
obviousness – applicant permitted to amend
– All applications are published after 18
months’ pendency, unless the application is
not subject to application in another country
or under a multinational agreement requiring
international publication and the applicant
requests secrecy
Inventor
Patent Number
Date Issued
Filing
Date
Patent Office
Classification
and Search
Fields
Prior Art
References
Cited During
Examination
Abstract
Background and
Summary
Claims
Independent
Claim
Specification
Dependent
Claims
Drawing
Patents
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What can be patented:
– Five questions:
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Is the invention patentable subject matter?
Is the invention new?
Is the invention useful?
Is the invention non-obvious?
Was the application filed within one year of
disclosure of the invention?
– Additional question post-application: was
there sufficient disclosure of the invention in
the patent document (written description and
enablement requirements)
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Patent Act sec. 112
Patents

What can be patented – subject matter:
– Patent Act sec. 101: “any new and useful process, machine,
manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent,” subject to
the conditions and requirements of the law.
 Case law: “Everything under the Sun that is made by
man.”
Patents
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Some Wacky Patents
– http://www.bpmlegal.com/weird.html
Patents
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What can be patented – utility -- “All
that the law requires is that the
invention should not be frivolous or
injurious to the well-being, good
policy, or sound morals of society. The
word ‘useful,’ therefore, is incorporated
into the act in contradistinction to
mischievous or immoral.”
Patents don’t have to be better – just
different
Patents – Subject Matter – Novelty
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§ 101 - Whoever invents or discovers any
new
new and useful process, machine,
manufacture, or composition of matter, or
any new
new and useful improvement thereof,
may obtain a patent therefor, subject to the
conditions and requirements of this title
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Note – a claimed invention fails under the novelty test
only if a single prior art reference contains all the
elements of the claimed invention (“all elements” rule)
Patents – Nonobviousness and
Originality
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§ 103(a) A patent may not be obtained though the
invention is not identically disclosed or described as
set forth in section 102 of this title, if the
differences between the subject matter sought to
be patented and the prior art are such that the
subject matter as a whole would have been obvious
obvious
at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be
negatived by the manner in which the invention
was made.
Patents
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Note – a claimed invention fails under the
obviousness test if it would have been
obvious to a person of ordinary skill in the
pertinent art at the time the invention was
made. Under obviousness, different prior art
references can be combined if there is some
suggestion in the prior art, or in the general
knowledge within the relevant art, to combine
such references
Prior Art for Novelty and
Obviousness
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102(a) – knowledge or use of the invention by
others in the United States, or publication or
patenting anywhere in the world
102(e) – disclosures contained in an application for
a U.S. Patent that is either published or matures
into a patent (Note – does not cover what is
claimed, rather covers matters not claimed but that
are disclosed – if claims are the same, an
interference is declared)
102(f) – derivation from another
102(g) – another person in the U.S. first invented
the invention and has not abandoned suppressed or
concealed it
Patents – Nonobviousness and
Originality – Graham Case
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Facts:
– Patent for device that absorbs shock from
plow shanks
– ‘811 (earlier) patent – shank placed on upper
side of hinge plate; wobble problems and
restricted flexibility
– ‘798 (later) patent – shank is on lower side of
hinge plate; allows shank to flex along entire
length
Patents – Nonobviousness and
Originality – Graham Case
– Obviousness
scope and content of prior art are to be
determined; differences between prior art and
claims at issue are to be ascertained; level of
ordinary skill in the pertinent art is to be
resolved.
 “Secondary considerations”: commercial
success, long felt but unsolved needs, failure
of others, acquiescence of others to the
patent
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Patents – Nonobviousness and
Originality – Graham Case
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Analysis (cont’d)
– Obvious to a person of ordinary skill in the art to
move the shank to the position below the hinge
plate in order to increase flexibility – this was
the only other logical place to put the shank
Patents – Statutory Bars
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§102(b) – “the invention was patented or
described in a printed publication in this or a
foreign country or in public use or on sale in this
country, more than one year prior to the date of
the application for patent in the United States”
102(c) – “he has abandoned the invention”
102(d) – “the invention was first patented or
caused to be patented, or was the subject of an
inventor's certificate, by the applicant or his
legal representatives or assigns in a foreign
country prior to the date of the application for
patent in this country on an application for
patent or inventor's certificate filed more than
twelve months before the filing of the
application in the United States”
Patents – Statutory Bars – UMC Case
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Patent No. 3,643,513
Timeline:
– Patent app. Filed August 1, 1968 – therefore, “critical date” is August
1, 1967
– 1966 – UMC employee Preston Weaver designs accelerometer in
response to request from Navy
– Late 1966 – UMC awarded accelerometer contract
– Early 1967 – UMC determines Weaver accelerometer will not meet
Milspec because it uses electromechanical transducer that cannot
distinguish between acceleration from in-flight maneuvers and
acceleration from other sources such as wind gusts
– April-May 1967 Weaver conceives of accelerometer with analog
transducer and built and tested engineering prototype of the sensor
– May 1967 – Navy issues new Milspec and RFP for accelerometers
– July 27, 1967 – UMC responds to RFP, represents that sensor portion
has been “constructed and tested”; but complete accelerometer
using the sensor not yet constructed
– August 1, 1967 – Critical Date
– August 2, 1967 – UMC submits detailed technical proposal to Navy
– August 9, 1967 – UMC demonstrates complete device to Navy
– Early 1968 – July 1968 – Navy cancels request to UMC and buys
analog accelerometers from a UMC competitor
Patents – Statutory Bars – UMC Case
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Issue: is there an on-sale bar if the
invention was not fully reduced to
practice at the time it is made available
for sale?
– Generally, invention involves two steps:
conception (the “mental step”) and reduction
to practice (constructing the invention in a
working form; or filing a patent application –
“constructive reduction to practice”)
Patents – Statutory Bars – UMC Case
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Policies behind on-sale bar
– Don’t remove inventions from public which
the public has justifiably come to believe are
freely available
– Prompt and widespread disclosure of new
inventions
– Prevent effective extension of patent term
– Reasonable time for inventor to determine
whether a patent is worthwhile
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Note – this is different than most foreign
jurisdictions, which require “absolute novelty” – no
use or disclosure prior to the patent application
Patents – Statutory Bars – UMC Case
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Holding: given the policies behind the
bar, a complete embodiment of the
invention is not required to trigger the
bar
Marketing a “mere conception” will not
trigger the bar, but where, as here, all
the essential elements of the invention
exist and are subject to a sale proposal
prior to the critical date, the bar applies
Design Patents – Black & Decker Case
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Design Patent D 272,476
Test for infringement – “if, in the eye of an
ordinary observer, giving such attention as a
purchaser usually gives, two designs are
substantially the same, if the resemblance is
such as to deceive such an observer, inducing
him to purchase one supposing it to be the
other.”
“The accused device must appropriate the
novelty in the patented device which
distinguishes it from the prior art.”
Plant Patents – Yoder Bros. Case
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Requirements for validity:
– New, distinct, non-obvious, asexually reproduced
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Novelty: the plant literally has not existed before; not a
plant that existed in nature but has been newly
discovered
Distinct: characteristics clearly distinguishable from
existing varieties (replaces the requirement of utility)
Nonobvious: examine
– Characteristics of prior plants of the same general type,
both patented and nonpatented
– Differences between prior plants and the claims at issue
 How much of an “improvement” does the new plant
represent?
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Asexual reproduction (a new requirement that is
introduced for plant patents)