Patent Law
Fall 2012
Class 1: 8.23.2012
Professor Merges
Logistics
• Office hours: Mondays, 2:00 – 3:15, or
by appt.
• 438 North Addition
• rmerges@law.berkeley.edu – 643-6199
Logistics II
• Course mailing list
• Posting selections from PowerPoint
slides
• Website:
http://www.law.berkeley.edu/institutes/
bclt/students/courses_html
www.law.berkeley.edu/instit
utes/bclt
Logistics III
• bSpace course page
– Syllabus
– Email archive
– Seating Chart
• Note the schedule
Logistics
Logistics IV
• AM Commute
• www.capitolcorridor.org
• http://www.capitolcorridor.org/home/
train_status.php
• Will send group email if train is very
late
Developments to watch
• AMP v. Myriad, gene patent
case, may go back to
Supreme Court; 1st to file
priority, reexam reform,
other detailed provisions of
AIA take effect March 16,
2013
Where to follow cases,
developments
• Patently-O Blog
• BNA Patent Trademark Copyright
Journal Daily
• US Patent Quarterly (BNA)
2 Main Topics Today
• Introduction patent
system
• Claims, patent document:
how to read (and write) a
patent
Venetian Patents
Patents in Britain
• Association of patents with
corrupt crown privileges
• End of these abusive
practices: the Statute of
Monopolies, 1623
Opposing principles in US
Patent Law
• Technology as a force for good in a
wild, untamed wilderness where labor
is scarce
• Patents as the remnants of royal
privilege; vestige of discredited
monarchy and vested power
Thomas Jefferson v.
Alexander Hamilton
If nature has made any one thing less
susceptible than all others of exclusive
property, it is the action of the thinking
power called an idea, which an
individual may exclusively possess as
long as he keeps it to himself; but the
moment it is divulged, it forces itself
into the possession of every one, and
the receiver cannot dispossess himself
of it. Its peculiar character, too, is that
no one possesses the less, because
every other possesses the whole of it.
He who receives an idea from me, receives
instruction himself without lessening mine;
as he who lights his taper at mine receives
light without darkening me. That ideas
should freely spread from one to another …
for the moral and mutual instruction of man,
and improvement of his condition, seems to
have been peculiarly and benevolently
designed by nature, when she made them,
like fire, expansible over all space, without
lessening their density at any point, and like
the air . . . incapable of confinement or
exclusive appropriation. Invention, then,
cannot be a subject of property.
Letter from Thomas Jefferson
to Isaac MacPherson, Aug.
13, 1813, reprinted in The
Portable Thomas Jefferson
531 (Merrill D. Peterson ed.
Penguin Books 1977)
“Jeffersonian Moments” in
US Patent Law
• Early federal period (17901800); Jacksonian era
(1830s); Progressive era
(1895-1915); New Deal
period (1932-1945); 1960s
and 1970s
William O. Douglas
Alexander Hamilton
Technology and the primeval
forest
“Dark forests from the view recede,
and herds and flocks in safety
feed, and plenty crown a cheerful
home where prowling wolves were
wont to roam.”
-- Sturbridge, Massachusetts
Centennial, July 4, 1838
Hamiltonian moments in US
Patent Law
• Federalist period (18001830); Mid-nineteenth
century (1865-1890);
1920s; 1950s; 19802005 (?)
Justice
Joseph Story
“The constitution of the United States, in
giving authority to congress to grant …
patents …, declares the object to be to
promote the progress of science and useful
arts, an object as truly national, and
meritorious, and well founded in public
policy, as any which can possibly be within
the scope of national protection. Hence it
has always been the course of the American
courts . . . to construe these patents fairly
and liberally, and not to subject them to any
over-nice and critical refinements. . . . AMES
v. HOWARD, 1 F.Cas. 755 (CCD Mass. 1833)
R. Kent Newmyer, Supreme Court Justice
Joseph Story: Statesman of the Old
Republic (UNC Press 1986)
“In these [patent] cases [Story] moved away
from undue reliance on English law in the
direction of an American patent law that
would favor inventors and, following the
spirit of the Constitution, serve national
interest by promoting technological
progress. . . . Story’s authority . . . was of
immense importance in giving legitimacy
to the new position. [H]e was identified by
contemporaries as the pioneer in the
liberalization of American patent law.”
Patent Document: Main Features
• CLAIMS!
– Very important now, Sup Ct, Federal
Circuit jurisprudence
• Specification
– Key: relationship to claims
– Timing issues
Cupholder – claim 1
Dependent Claims
Claim Scope 101
• What is the goal?
–Maximize “SHELF
SPACE” you own
• How do you get there?
– By drafting broadest claim(s) possible
More space,
more $$!
P. 46: “A cupholder comprising a strip of
insulating material, said strip having two
ends capable of interlocking to form a
band for receiving a cup.”
The “Noon” Patent – p. 44
P. 36: “A cup holder
comprising a band of
insulating material.”
THIS PRODUCT
DOES NOT
INFRINGE
NARROW CLAIM
P. 36: “A cup holder
comprising a band of
insulating material.”
Claim Breadth
Short, broad
claim
“Band of
insulating
material”
Band
with OUT
interlocking ends
Band
with
interlocking ends
P. 46: “A cupholder comprising a strip of
insulating material, said strip having two
ends capable of interlocking to form a
band for receiving a cup.”
More words usually equals narrower
claim, less “shelf space”
Narrower,
longer claim
Insulating
Band,
“having 2
ends capable
of
interlocking”
Band
without
interlock
-ing
ends
Where do claims come from?
Conceptual
“set”; genus
Physical
Object/S
pecies
Claim 2): All
Shirts
3) “All
red
shirts”
Broadest
Claim (Claim
1): All
Clothing
Cupholder – claim 1
Dependent Claims
Dealing with Prior Art
• Multiple claims
– More variations in scope, more chances to own
the key piece of shelf space
– More chances that at least one claim will end up
valid and valuable
• Disclosure, searches, prosecution
– A complex calculus governs searching for and
including prior art
– Willfull infringement/inequitable conduct
“picture
claim”
Broadest
Claim (Claim
1)
Special case: dependent
claim
“the ____ of claim 1, wherein the _____
[element] comprises ______.”
Dependent claims define subsets of the
claims form which they depend
1. A cupholder
comprising a band of
insulating material.
Claim 1
‘473 Coffin
Sr. –
tubular
preformed
Claim 1
Claim 1
Noon
prior
art
holder
Claim 1
‘473 Coffin
Sr. –
tubular
preformed
Noon
prior
art
holder
“Less is More” (Enforceable)
‘473 Coffin
Sr. –
tubular
preformed
Narrower,
longer claim
Corrugated
paper strip
w/ “slotted”
closure
Noon
prior
art
holder
• United States Patent 5,425,497 Sorensen June 20,
1995 Cup holder
• Abstract
• A cup holder is disclosed in the form of a sheet with
distal ends. A web is formed in one of the ends, and a
corresponding slot is formed in the other end such that
the ends interlock. Thus the cup holder is assembled by
rolling the sheet and interlocking the ends. The sheet
can be an elongate band of pressed material, preferably
pressed paper pulp, and is preferably formed with
multiple nubbins and depressions. In one embodiment,
the sheet has a top and bottom that are arcuate and
concentric, and matching webs and cuts are formed in
each end of the sheet, with the cuts being perpendicular
to the top of the sheet.
• Inventors: Sorensen; Jay (3616 NE. Alberta Ct.,
Portland, OR 97211) Appl. No.: 150682Filed: November
9, 1993
Narrowing
Amendment
“prior Art Chart”
• P. 45
• Multiple features,
compared to claim
Patent System Overview
• Administrative Agency: PTO
• Reviewing courts
– District courts
– Federal Circuit (after 1982)
– US Supreme Court (especially since 1995)
Patent System
• PTO – Court relationship unusual
• PTO predates most administrative
agencies
• APA applied to PTO piecemeal and
incompletely