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411 on Patents 101
- 2. What is Intellectual Property Law ? “Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” –WIPO
- 3. US Legal Basis for IP Rights U.S Constitution The Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. (Art. 1, Sec. 8, Clause 8) Laws, Regulations & Guidance Federal Law: 35 U.S.C. § 100 et seq. Regulations: 37 C.F.R. Chapter I, Subchapter A US PTO Manual of Patent Examining Procedure (MPEP) [http://www.uspto.gov/web/offices/pac/mpep/mpep.htm] 3
- 4. Why is it Important to Protect your Intellectual Property ? Ability to protect core ideas Limited term monopoly Provides a protected competitive advantage Opportunity to recoup costs on necessary R&D Defend one’s ideas from infringement Commercialize your invention successfully no more “Grant Proposals”!
- 5. Types of IP Trade Secret “Secret Sauce” Copyright “Artistic expression in the way something looks or sounds” Patent “Protects the embodiment or method of an idea” Trademark “Branding” DO NOT USE THESE TERMS INTERCHANGEABLY!
- 6. Patents—Summary What may be protected Process, machine, manufacture or composition of material; plants; designs Protection provided May prevent others from making, using, selling, offering for sale and importing How to obtain Application process through US Patent & Trademark Office protection Duration Utility/Plant—20 years from filing Design—14 years from filing Enforcement Infringement suit in Federal Court Flow Diagram from the USPTO on the Process 6
- 7. Patents What is a patent? Often considered a contract between government and an inventor A limited and temporary monopoly granted by the government in return for a full disclosure by the inventor of the details of his or her invention 7
- 8. Patents Limited Monopoly in Exchange for Disclosure The inventor discloses the invention in sufficient detail to teach a person skilled in the same field of art how to make and practice the invention. The expectation is that, in view of the teaching, people will then build upon this invention to create improvements and other new inventions. The monopoly is limited to 20 years from the date the patent application was filed (Utility/Plant). 8
- 9. Patents: Specific Rights A patent affords the owner the right to exclude others from making, using, offering to sell, selling, or importing the claimed invention (35 U.S.C. §271). A patent does not give the owner an affirmative right to make, use, offer to sell, sell, or import the claimed invention. 9
- 10. Patents (Cont’d.) What may be patented? Utility Patent Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof (35 U.S.C. §101) Note: A “Utility Patent” in Europe means something else and is a lesser type of patent. Plant Patent Any new and distinct, invented or discovered asexually reproduced plants (35 U.S.C. §161) Design Patent Any new, original, and ornamental design for an article of manufacture (35 U.S.C. §171) 10
- 11. Requirements to Obtain a Patent Utility Novelty Non-obviousness Disclosure 11
- 12. Patent Applications Provisional Patent Application Placeholder-1 year from date of filing Claims are not required, and application is not examined Automatically abandoned at one year, and priority date is forever lost, unless it is converted or priority is claimed in a utility application Missing Parts Pilot Program (Extends Prov to 2Yrs) Utility Application Claims required and inventorship determined; Application subject to substantive examination; and Patent may issue 12
- 13. Typical Patent Application Process Provisional Non-Provisional-Examiner Reviews Case Non-Final Rejection Claim Amendment by Filer Allowance or Final Rejection If Allowed-Done but if FR then an After-Final Typically Occurs If AF-Rejected then RCE, Abandonment, or Appeal to BPAI If case goes BPAI route can eventually go CAFC and then SCOTUS
- 14. Utility Patent: Statutory Subject Matter Title 35 U.S.C. §101 Inventions Patentable Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 14
- 15. Utility Patent: Statutory Subject Matter Process Defined as a process, act, or method, and primarily includes industrial or technical processes Includes a new use of a previously known process, machine, manufacture, composition of matter, or material Machine Manufacture Articles that are made; includes all manufactured articles Composition of Matter Chemical compositions: may include mixtures of ingredients as well as new chemical compounds 15
- 16. Utility Patent: Statutory Subject Matter Matters not subject to patent protection Laws of nature Physical phenomena Abstract ideas Inventions solely used for nuclear or atomic weapons Perpetual Motion Machines Can’t be Patented! 16
- 17. A Single “Invention” Can Span More Than One Statutory Category Example 1: Chemical Invention Composition of Matter New chemical compound Pharmaceutical formulation Process Method of making the chemical compound Method of using the chemical compound for specific purpose Example 2: Mechanical Invention Machine Computer-based apparatus for processing data Process Method for processing data 17
- 18. Utility Patents: Disclosure Parts of the Application: Specification Drawings Claims 18
- 19. Utility Patent: Disclosure Specification: A written description of the invention; The manner and process of making and using it; Sufficient to enable a skilled worker to make and use it; Including the best mode of practicing it. 19
- 20. Utility Patent: Claims Must point out and distinctly claim what applicant regards as the invention Defines and delimits the scope of the exclusive right A very important part of the application 20
- 21. Patents: Novelty “A person shall be entitled to a patent unless” - PTO's burden to show invention is not patentable; Applicant has uncompromising duty of candor to disclose material information; PTO performs independent art search; Rejection(s) must be supported by a proper prima facie case. Burden shifts back to applicant to prove, e.g., Evidence is not prior art; Evidence is insufficient to support a prima facie case; Evidence does not disclose operable embodiment(s). 21
- 22. Patents: Nonobvious Subject Matter Invention is not identically disclosed in the art (novelty); But differences between prior art and the invention "would have been obvious at the time the invention was made to a person having ordinary skill in the art...." --35 U.S.C. §103 22
- 23. Patent: Infringement Infringement of a Patent Claims delimit the exclusive right Literal infringement The literal language of a claim reads on the accused product/process Every limitation of a claim is met Doctrine of Equivalents (DOE) The DOE can expand exclusive rights beyond the literal language of the claim Limitations: Prior art & Prosecution History 23
- 24. Prior Art & International Protection People will forever keep on “reinventing the wheel” Know your technology’s competitive landscape Just because you have a patent does not mean your IP is protected US Patent is good only in the US PCT Applications provide an opportunity to file your patent protection globally with other country’s IP offices Hard to enforce adequate protection overseas without procuring Patents in foreign countries. Unless you are a MNC or buddies with the USTR Rep
- 25. The America Invents Act Signed into law by President Obama September 16, 2011 As noted by USPTO Director David Kappos, the AIA is “the most comprehensive overhaul to our nation's patent system since 1836.” 25
- 26. The America Invents Act Key Elements Fast track option for Patent Processing within 12 Months: Instead of an average wait time of almost three years, the PTO will be able to offer startups growing companies an opportunity to have important patents reviewed in one-third the time – with a new fast track option that has a guaranteed 12-month turnaround. Patent ownership is a critical factor venture capital companies consider when investing in entrepreneurs hoping to grow their business. Reducing the patent backlog: Additional resources provided in the law will allow the PTO to continue to combat the backlog of nearly 700,000 patent applications and will significantly reduce wait times. Reducing litigation: The PTO will offer entrepreneurs new ways to avoid litigation regarding patent validity, at costs significantly less expensive than going to court. Increasing patent quality: The law gives the PTO additional tools and resources to further improve patent quality, and allows patent challenges to be resolved in-house through expedited post-grant processes. Harmonizing American Patent Law: The new law harmonizes the American patent process with the rest of the world to make it more efficient and predictable, and make it easier for 26 entrepreneurs to simultaneously market products in the U.S. and export abroad. The PTO has
- 27. The America Invents Act “First Inventor to File” The effective date for the First Inventor to File provision of AIA is March 16, 2013. An application filed before that date would not be subject to the first-inventor-to- file provisions. That application would be treated under the first-to-invent provisions of the law in effect on September 15, 2011. Even after “First Inventor to File” takes effect, only inventors are entitled to a patent. Someone who copies another’s idea cannot be the inventor. Someone who copies another’s idea and files a patent application on the subject matter before the true inventor does so would not be entitled to a patent. Regardless of whether an application is filed before or after the “First Inventor to File” provisions take effect on March 16, 2013, disclosure one month prior to a filing date is not prior art to the claimed invention by virtue of a one year grace period. 27
- 28. The America Invents Act “Best Mode” The effective date for the Best Mode provision of the AIA was September 16, 2011. Under the AIA’s amendment to 35 U.S.C. 282(a)(3), concerning Best Mode, the failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. AIA’s amendment to 35 U.S.C. 282(a)(3) is applicable only in patent validity or infringement proceedings, and does not change current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112, as set forth in the Manual of Patent Examination Procedure (MPEP) § 2165. 28
- 29. The America Invents Act “Derivation Proceeding” The effective date of the “Derivation Provision” under the AIA is September 16, 2012. A “Derivation Proceeding” under the AIA requires filing a petition. A petitioner must claim the same or substantially the same invention as the earlier application’s claimed invention. The petition must be supported by “substantial evidence” that the earlier claimed invention was derived from petitioner, and filed without authorization. An applicant for patent may file a petition for a derivation proceeding. The petition must be filed within one year of first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. 29
- 30. The America Invents Act “Inter Partes Reexamination” The effective date of the inter partes reexamination provisions was September 16, 2011. Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. The standard for ex parte reexamination remains unchanged. The pre-AIA Substantial New Question of patentability (SNQ) standard is applicable in determining whether a request for inter partes reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to September 16, 2011. Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012. Inter partes reexaminations pending on that date will not be converted into inter partes review proceedings. Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted. 30
- 31. The America Invents Act “Inter Partes Review” The inter partes Review process will be effective September 16, 2012. Under the new inter partes Review process, a petitioner may request to cancel as unpatentable 1 or more claims of a patent based on §§ 102, 103 using patents or printed publications. A person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of the required fee, a petition to institute an inter partes Review of the patent. The petition must demonstrate a reasonable likelihood that the petitioner will prevail on at least one claim challenged. The petition cannot be filed until after the later of: 1) 9 months after the grant of a patent or issuance of a reissue of a patent, or 2) the date of termination of any post grant review of the patent. 31
- 32. The America Invents Act “Post Grant Review” The effective date of the provisions for Post Grant Review is September 16, 2012. Under the Post Grant Review process, a petitioner may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity), i.e., §§ 101, 102, 103, 112 (except best mode). A Post Grant Review is generally limited to patents issuing from an application filed under the first- inventor-to file system. A person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of the required fee, a petition to institute a Post Grant Review of the patent. The petition must demonstrate that it is more likely than not that the petitioner will prevail on at least one claim challenged or raises a novel question that is important to other patents or publications. The petition may be filed only within 9 months after the grant of a patent or issuance of a reissue patent. 32
- 33. The America Invents Act “Prioritized Examination (Track 1)” The effective date of prioritized examination was September 26, 2011. Prioritized Examination is a procedure for expedited review of a patent application for an additional fee. The Office’s goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted. Nonprovisional utility and plant patent applications with no more than 4 independent claims, 30 total claims, and no multiple dependent claims filed on or after September 26, 2011 are eligible for Prioritized Examination (Track I). Requests for Prioritized Examination of utility patent applications must be filed using EFS- Web. Requests for Prioritized Examination of plant patent applications must be filed in paper. For both utility and plant patent applications, it is strongly recommended that applicants use Form PTO/SB/424 to request prioritized examination, but the form is not required. Fees include, but are not limited to a Track I prioritized examination fee of $4800.00 ($2400.00 for small entities). 33
- 34. The America Invents Act “Micro-Entity Discount” Often 75% discount Institutes of higher education are automatic Or – No more than 4 previous U.S. non-provisional patent applications – Gross income not exceeding 3x the median income “has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to” a non-micro entity. 34
- 35. The America Invents Act “Tax Strategies, Business Methods” The AIA makes important changes affecting applications with claims directed to “Tax Strategies” and certain “Business Methods,” including a “Transitional Program” for “Covered Business Method Patents.” If your invention, application or issued patent involves these types of claims, consultation with patent counsel is suggested. 35
- 36. Patents: Novelty – Pre-AIA A person shall be entitled to a patent unless - The invention was known or used by another, or patented or published before invention by applicant; It was patented or published anywhere, or publicly used or on sale in this country >1 year before filing the application; It was abandoned by the applicant; or It was patented by applicant in a foreign country prior to application in the U.S. on an application filed more than 12 months before filing in the U.S. Applicant did not invent it (derivation) 36
- 37. Patents: Novelty – Post-AIA A person shall be entitled to a patent unless “(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.” 37
- 38. Patents: Novelty – Post-AIA ‘‘(b) EXCEPTIONS.— ‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— ‘‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or ‘‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” 38
- 39. Patents: Novelty – Post-AIA ‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— ‘‘(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; ‘‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or ‘‘(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.” 39
- 40. Patents: CREATE Act incorporated into AIA Limited safe harbor from obviousness for collaborators from different institutions; Invoked upon §103(a) rejection Available only if: A Joint Research Agreement (JRA) was in effect at time of invention; Prior art and invention both made by parties to JRA; Invention resulted from activities within scope of JRA; Amend application to identify parties to JRA For any collaborative effort, e.g., MTA, NDA, CRADA ... 40
- 41. Utility Patent: Priority Recordkeeping – Still Important After American Invents Act! Changes “First to Invent!” US patents will no longer be available for a first inventor if a second inventor files first Ways of proving derivation: Permanent record, e.g., laboratory notebook Dated Witnessed 41
- 42. The America Invents Act Learn More at PTO AIA Web Pages PTO has set up a web page devoted to AIA that is being frequently updated: http://www.uspto.gov/aia_implementation/index.jsp Look for multiple Notices of Proposed Rule Making from the PTO over the next year as it implements the AIA, with short comment periods and no extensions. The PTO is encouraging stakeholders not to wait for a specific Notice to submit comments. 42
- 43. 43
Editor's Notes
- (Source: http://www.wipo.int/about-ip/en/)
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. STUDENT NOTES: Common law: American legal system is part of the common law tradition. Early English law developed the tradition of precedent and stare decisis, i.e., "when a court has once laid down a principle of law as applicable to a certain state of facts, it will adhere to that principle and apply it to all future cases where facts are substantially the same." Thus, the law became embodied in the written decisions of the English Courts. This was the first recognition of courts as law-making bodies, further divesting the Crown of authority. This is contrasted with the rigid codified body of law, which was not subject to "common" interpretation. The earliest statutes of England were derived from the King and his council; and, as such, they were presented as the only entities capable of interpreting it. Eventually, Parliament took on the role of lawmaker; and ultimately, the courts assumed responsibility for interpreting it. The body of law derived of such interpretation is what is known as the Common Law. In the early days of the United States, because of its close historic affiliation with the English legal system, most states enacted "Reception Statutes. Those laws expressly adopted the Common Law of England up until the enactment of our Constitution. Thus, we have an unusually complex Federal system of laws comprised of: the Constitution; Acts of Congress, the jurisprudence of our Federal Courts (e.g., Supreme Court); the Common Law; and the laws of the 50 states. The laws governing the various types of intellectual property draw on all those sources. INSTRUCTOR NOTES: Discuss bodies of law that protect various types of intellectual property. Discuss the relationship of federal law, state law, and common law for a particular issue. “ Common law” today refers to the collection of court decisions relating to a subject.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Summarize only very briefly key concepts of trade secret protection. Transition to patents by discussing the concern of kings in England that preserving secrets within the Guilds was inhibiting economic development. The theory was that if the secrets could be “seduced” from the Guilds and made public, that would benefit the public and stimulate economic development. The problem was adequately rewarding the Guilds for the revealing of their secrets. The reward thought to be compelling enough to seduce the Guilds to disclose their secrets was a monopoly or exclusive privilege granted by the king for a “limited time.” Hence, the birth of the patent system in England upon which the US and European laws are based. Federal court jursidiction arises in diversity and EEA cases.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: (NOTE: Example patent to be replaced) Introduce patents. Patents fully disclose how to make and use an invention. But the public is not free to practice the invention unless permission is granted by the patent owner (by a license!) during the life of the patent, or the patent expires (20 years from filing of the application). During the life of the patent, commerce is stimulated by the efforts to invent new things that avoid infringing the patented invention. That is, the very act of avoiding patent infringement may itself be an inventive act that entitles the second inventor to obtain a patent on the second invention that avoids the first, and hence the cycle continues. In what instances are patents an incentive to technology and economic development? Any place where reverse engineering is easy to accomplish. Where are those places? Pharmaceuticals (you can put a chemical in a machine in the morning and get the formula for the molecule by lunch), mechanical components (just buy one and take it apart), computers (same), etc. Generally, patents can be for processes, machines, articles of manufacture, compositions of matter, or their improvements. Look at the claims of this patent and identify type.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss that patents permit the holder to exclude others from practicing his/her invention and do not give the holder the right to make or use his own invention. Provide examples of how this possibility might arise. Enforcement of a monopoly right doesn’t accrue until issuance of a patent that is usually 2-3 years post-filing. Hence, the actual term of the monopoly is less than 20 years.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss that patents permit the holder to exclude others from practicing his/her invention; but do not give the holder the right to make or use the claimed invention. Provide examples of how this possibility might arise.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the statutory categories of matter that are protected by patents.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: This slide merely introduces the collective concepts of §§101-103 and 112. They are discussed in more detail subsequently. Subject Matter The invention must be within the range of subject matter identified as being patentable Utility The invention must be useful Novelty The invention must be new - i.e., not previously known in identical form; not on sale for more than a year before file application Non-obvious It must have been non-obvious to a person of ordinary skill in the art at time of invention Disclosure A written description must be provided of sufficient detail to enable others to practice the invention and it must also disclose the best mode of practicing the invention
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Compare and contrast standard utility application with provisional utility application.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. Instructor Notes: Use this slide to introduce the general concepts, which are elaborated upon later. Also address the statute’s entitlement provision: the inventor may obtain a patent, unless the various requirements of the statue are not met.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Focus on statutory subject matter particularly for a utility patent. STUDENT NOTES: Generally, categories of patentable subject matter are interpreted broadly. Consider the case of Diamond v. Chakrabarty , 447 U.S. 303 (1980), which addressed the patentability of living microorganisms. Chakrabarty had filed a patent application relating to a human-made, genetically engineered bacterium capable of breaking down crude oil, a property possessed by no naturally occurring bacteria. The examiner issued a rejection on the ground that living things are not patentable subject matter under §101, which rejection was sustained in the lower tribunals. The Supreme Court reversed, however, concluding that the fact that micro-organisms are alive is without legal significance for purposes of the patent law. In part, the Court held: A live, human-made micro-organism is patentable subject matter under 101. Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute. (a) In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress contemplated that the patent laws should be given wide scope, and the relevant legislative history also supports a broad construction. While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent's claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter - a product of human ingenuity "having a distinctive name, character [and] use." See also USPTO Manual of Patent Examining Procedure , Chap. 2100, § 2105.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss subject matter not protectable by a patent. Law of Nature : E=MC ² is not patentable subject-matter. The relationship must be embodied in a process, article of manufacture, machine, etc., to be patentable subject-matter. Physical Phenomena : Nuclear Fission is not patentable subject-matter. However, a nuclear reactor is patentable. Abstract Ideas : Fly me to moon. However, rocket is patentable. Wing warping to control flight was patented by the Wright Bros. – they did not patent “flight.” Nuclear Weapons : Strictly a political issue; not truly a statutory subject matter problem.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss examples of a "single" invention falling within more than one statutory category. STUDENT NOTES: The patent statute permits the PTO to limit each patent to only one invention. 35 U.S.C. §121. Thus, the PTO consistently restricts applications having claims directed to more than one invention. A Restriction Requirement obligates the applicant to elect a claim or group of claims for further examination. For example, an examiner might identify as distinct inventions claims directed to: a) a product; and b) a process for making that product. The applicant may traverse the restriction requirement and/or the grouping of claims, often arguing that the Restriction Requirement is improper in that the two or more of groups of claims do not constitute separate and distinct inventions. Such arguments often fail. The PTO is given broad discretion in restricting applications, and the PTO's basis for restriction includes the convenience of the Examiner in conducting the prior art search. The result is that many applications directed to a "singular" invention are found to be directed to many inventions. Once applicants have made their election of claims for further examination, prosecution continues directed to only those claims. Applicants may pursue the non-elected claims in one or more divisional applications. The divisional application is identical to the parent or priority application except for the claims. A divisional application is entitled to the priority date of the ultimate parent but must be filed during the pendency of the parent or a related application.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Tell students to turn to the first pages in the RESOURCES SECTION of their books to find the specs, drawings, and claims for this patent. Give them 2-3 minutes to scan the patent. Then ask (1) what they notice. If the information below does not come out in the student responses, ask (2) “What do the specs and drawings do?” (3) “What do the claims do?” Explain to student the varying scope of claims in relationship to specifications. STUDENT NOTES: The specification must include: - A written description of the invention; - The manner and process of making and using it; and - Enabling one of ordinary skill in the art to make and use the same. Drawings : Optional, but must be included where necessary for an understanding of the invention. Claims : The most important part of the patent. These one-sentence descriptors define the scope of the exclusive rights. Generally, the starting point in drafting the application; examination; and interpretation of the scope of the exclusive right. The claims must particularly point out and distinctly claim what applicant regards as the invention. Note that claims are to be interpreted first according to their ordinary meaning; and then by resort to the specification and the file history . Thus, the scope of protection is not necessarily limited to the embodiments or examples of the specification and drawings.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. STUDENT NOTES: The specification is important, but it plays only a supporting role, i.e., every claim limitation must be found within the specification. The claims are the starting point in: the preparation of the application; PTO examination; and a court’s determination of validity and/or infringement. Claims set forth the metes and bounds of the exclusive right, and so have great legal significance. Each claim must point out with particularity that which the applicant regards as the invention, and must describe the invention in such a way that it is distinct, in a patentable sense, from that which came before. It is the most difficult drafting exercise of the application process, and, as such, it requires the greatest attention from both the attorney and the inventor(s). The examiner relies upon the language of the claims to construct her prior art search, and in formulating her rejections. The examiner is precluded from incorporating language or limitations from the specification, and so, ideally, the claims are clear, succinct, and crafted to stand on their own. INSTRUCTOR NOTES: Discuss applicant’s option to be her own lexicographer, and some of the pros and cons, e.g., adequacy of the definition, lack of general acceptance and usage of the new term, issues of degree and scope, etc. Discuss also strategies for application preparation that contemplate claim amendments, and the wisdom of constructing the application such that it incorporates “fall-back” embodiments of reduced claim scope. Discuss the importance of claim construction in the enforcement of a patent, and the role and significance of Markman hearings.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the role of the claims in a patent and compare and contrast literal infringement with infringement under the Doctrine of Equivalents. It may be useful to discuss literal infringement in terms of trespassing over a real property line. Whether you are over the line is not always entirely clear. Line is razor sharp – a string. DOE is like using the Great Wall of China as a property line. When have you moved over the line? Is "on the line" a trespass? Is more than halfway across a trespass? Is climbing the wall a trespass? Real property borders are generally thin; word borders are fuzzy and have a “fatness” that makes more challenging the determination of when a trespass occurs. The purpose of the DOE is "fairness" and to avoid "defrauding the inventor."
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. STUDENT NOTES: Novelty These paraphrase the more commonly invoked provisions of 35 U.S.C. §102 "Conditions for patentability; novelty and loss of right to patent" A reference or event that destroys novelty is said to anticipate the claimed invention. To anticipate a claim, the reference must teach every element of the claim. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California , 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M , 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).... See also MPEP §2131.02 ("The identical invention must be shown in as complete detail as is contained in the...claim." Richardson v. Suzuki Motor Co ., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond , 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). MPEP §2131
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. STUDENT NOTES: Novelty These paraphrase the more commonly invoked provisions of 35 U.S.C. §102 "Conditions for patentability; novelty and loss of right to patent" A reference or event that destroys novelty is said to anticipate the claimed invention. To anticipate a claim, the reference must teach every element of the claim. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California , 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M , 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).... See also MPEP §2131.02 ("The identical invention must be shown in as complete detail as is contained in the...claim." Richardson v. Suzuki Motor Co ., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond , 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). MPEP §2131
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. STUDENT NOTES: Novelty These paraphrase the more commonly invoked provisions of 35 U.S.C. §102 "Conditions for patentability; novelty and loss of right to patent" A reference or event that destroys novelty is said to anticipate the claimed invention. To anticipate a claim, the reference must teach every element of the claim. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California , 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M , 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).... See also MPEP §2131.02 ("The identical invention must be shown in as complete detail as is contained in the...claim." Richardson v. Suzuki Motor Co ., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond , 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). MPEP §2131
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. STUDENT NOTES: Novelty These paraphrase the more commonly invoked provisions of 35 U.S.C. §102 "Conditions for patentability; novelty and loss of right to patent" A reference or event that destroys novelty is said to anticipate the claimed invention. To anticipate a claim, the reference must teach every element of the claim. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California , 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M , 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).... See also MPEP §2131.02 ("The identical invention must be shown in as complete detail as is contained in the...claim." Richardson v. Suzuki Motor Co ., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond , 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). MPEP §2131
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.
- Copyright © 2006 Licensing Executives Society (U.S.A. and Canada), Inc. All rights reserved. INSTRUCTOR NOTES: Discuss the United States policy of providing patent protection to the first to invent even if the first to invent is not the first to file for a United States patent application. Discuss the related point of the need to keep records during the invention process should a requirement arise to prove a date of invention or reduction to practice. “ Priority” means who wins in a contest when there are two applicants for a patent. In the U.S., the winner is the first to invent; in other countries the winner is the first to file. STUDENT NOTES: The U.S. stands alone in the world today as awarding exclusive rights on a first-to-invent basis rather than first-to-file. While a change is likely, and implementing legislation is pending in Congress, it remains the law. The U.S. first-to-invent system gives rise to certain peculiarities. For example, it is occasionally necessary to determine who was the first inventor. This administrative proceeding, termed an interference, is conducted by the PTO. It is a quasi-judicial proceeding conducted by an administrative law judge; and the parties have the opportunity to contest their opponent's evidence and arguments. There is also the right to an appeal either to a U.S. District Court or directly to the U.S. Court of Appeals for the Federal Circuit. Another peculiarity of the U.S. system is that it rewards efforts to create and preserve evidence of priority of invention. Because such evidence is often dispositive, and is subject to attack, it is worthwhile to institute procedures to create reliable and verifiable evidence of invention at the earliest opportunity in the invention process. Thus, it is wise to catalog and verify any and all material events from conception to reduction to practice, and even up to the date of filing.