Intellectual Property Law

Chapter 17 Discussion Answers

1. Assume that Iris Inventor invents a new camera on September 15, 2014. She files
her patent application for it on September 1, 2015. Determine whether the
following activities would defeat the patent on the basis that it is not novel.

a. A poster about the camera and its elements is published in France on July
15, 2015.
Iris’s patent application is barred. This disclosure was made
before Iris filed for her patent and did not stem from Iris. Such
disclosures will bar patentability regardless of whether they
occur in the United States or elsewhere.

b. Peter demonstrates Iris’s camera at a trade show on July 1, 2015.
Iris’s patent application is barred (assuming Peter is not a coinventor
or did not obtain the information from Iris) because
the disclosure was made not by Iris but by another prior to
Iris’s filing date of September 15, 2015. Iris’s camera cannot be
novel if Peter is already demonstrating it prior to the date Iris
files her patent application.

c. Iris demonstrates her camera to four potential investors on August 1, 2015.
All of the investors have signed confidentiality agreements, promising not
to disclose any information about the camera.
This demonstration or disclosure will not defeat novelty
because a secret use does not qualify as prior art that would
defeat a patent application.

d. Jackie invents a camera that is identical to Iris’s on September 10, 2014,
and files a patent application for the camera on September 7, 2015.
Jackie’s application is barred because it was filed after Iris’s.
The fact that Jackie invented the camera first is not relevant to
Iris’s application; the first inventor to file the application for
the patent “wins,” and thus Iris’s patent will “beat” Jackie’s.

2. ABC Inc. has a large research department, consisting of more than 100 engineers,
all of whom have been attempting, without success, to invent a new apparatus to
broadcast data. The issue was recently resolved by Jack King, a tinkerer working
in his garage at home. What does this scenario suggest to you about the
obviousness of the new invention?
This question implicates Graham “secondary considerations.” It
appears that there was a long-felt need for this device and failure of
others to resolve the problem. ABC has a very large research staff and
yet could not solve the problem. This suggests that Jack’s invention is
nonobvious; if it were easy to solve the problem, ABC’s highly trained
and numerous engineers would have been able to do so.

3. Luxe Inc. recently patented a new bangle bracelet. The company spokesperson is
Angelina Jolie who is often seen wearing the bracelet. The bracelet has become
very popular and sales have increased significantly. Its largest competitor, Jewelry
R Us, Inc., has argued that the patent is invalid because the bracelet is obvious.
Discuss whether the commercial success of the bracelet shows it is nonobvious.
Commercial success tends to show nonobviousness. Widespread
acceptance in the marketplace tends to show that an invention is
significant; however, in this case, Luxe may need to demonstrate that
the commercial success of the product is due to some property
inherent in the bracelet rather than due to the external factor that an
extremely popular actress, Angelina Jolie, is the company
spokesperson and is often seen wearing the bracelet. It is possible that
the commercial success of the bracelet is due to the fact that
consumers want to “copy” or “be like” Angelina Jolie rather than due
to some inherent property of the bracelet itself. Luxe may need to
demonstrate a nexus between the commercial success and the bracelet
that is not due to the external factor of the celebrity status of the
company’s spokesperson.

4. Patent applications for a ring, a hybrid rose, and an energy meter were all filed on
January 10, 2014. All patents were granted on March 1, 2016. Give the duration
for each patent.
The design patent for the ring will expire 15 years after the date of
grant (March 1, 2031). The plant patent for the hybrid rose and the
utility patent for the energy meter will expire 20 years from the
application filing dates, on March 1, 2036.

5. Discuss whether the following items are likely patentable or what objections the
USPTO might raise to a patent application for these items:

a. A well known economic principle
Not patentable; this is a mere abstract idea.

b. An engraved clasp for a necklace
This should be patentable as a design patent.

c. An early blooming apricot tree
This should be patentable as a plant patent if it was asexually
reproduced.

d. A chemical composition to treat autism
This should be patentable as a composition patent.

e. An idea to treat autism
Not patentable; this is a mere abstract idea.

f. A test for determining blood type in a cat
This should be patentable as a utility patent.

g. A cat
Living organisms are not patentable.

h. A new type of cat litter scoop
This should be patentable as a utility patent.

i. A slightly smaller cat litter scoop
This minor improvement on the cat litter scoop is likely
obvious and would thus be unpatentable. Such a small
alteration would be obvious to a person having ordinary skill
in the art to which this invention pertains. Mere changes in size
are typically viewed as obvious improvements.

6. Classify each of the following as a utility, design, or plant patent:
a. A combination of two drugs to promote the healing of wounds
This is a utility patent (specifically, composition of matter
utility patent).

b. A doorbell chime
This is a utility patent (a machine or manufacture).

c. A method of diagnosing cervical cancer
This is a utility patent (likely a process utility patent).

d. A container for carry-out food
Containers are eligible for patentability as design patents.

e. A blueberry plant named “Orsono”
If this plant was asexually reproduced (and is distinctive), it
should be patentable.

f. Video poker game
This is a utility patent (a machine or manufacture).