Intellectual Property Law

Chapter 17 Lecture Notes

Major points addressed in the chapter include the following:

1. A patent is a grant from the U.S. government to exclude others from making, using,
or selling another’s new, nonobvious, and useful invention for the term of patent
protection. After the patent expires, the invention falls into the public domain and can
be used by anyone without permission.

2. Copyright law protects works as long as they are independently created. Under patent
law, however, patentees/inventors can enjoin another from making, using, or selling
an infringing invention even if it was independently created.

3. To obtain a patent, an application that describes the invention with specificity must be
filed with the USPTO.

4. Patent law derives from the Constitution and protects the public good in that patent
protection encourages invention and introduction of new products and processes. In
return for the full disclosure to the public of the specifics of the invention, the
inventor is given a limited period of time within which to exploit his/her invention
and exclude others from doing so.

5. Patents are governed exclusively by federal law, namely, the Patent Act. The
procedures relating to examination and issuance of patents are found in the USPTO’s
Manual of Patent Examining Procedures (MPEP). Regulations relating to patents are
found in title 37 of the Code of Federal Regulations.

6. To secure patent protection, an invention:

• Must be a utility, design, or plant patent
• Must be useful (or ornamental in the case of a design patent or distinctive in the
case of a plant patent)
• Must be novel in relation to the prior art in the field
• Must not be obvious to a person of ordinary skill in the field

7. The Court of Appeals for the Federal Circuit, created in 1982, has exclusive
jurisdiction over cases involving patent issues.

8. Unlike trademark and copyright law, which both recognize common law rights in
marks and works of authorship without federal registration, patent law requires that
an inventor secure issuance of a patent from the USPTO to protect and enforce his/her
rights against infringers.

9. Patents exist only by authority of government grant. The department of the
government responsible for granting patents is the Department of Commerce, acting
through the USPTO, which receives applications, reviews them, and issues or grants
patents.

10. Utility patents are the most common type of patent and cover a wide variety of
processes and products (machines, manufactures, and compositions of matter, which
are a combination of two or more materials or chemicals into one product). Although
ideas are not patentable, processes are. An invention can also consist of some new use
of a process, machine, etc., as long as the new use shows significant change from the
original invention. An item/process must be useful, novel, and nonobvious to achieve
protection as a utility patent. As discussed in Chapter 21, patents are also available for
certain business methods, assuming they are more than mere abstract ideas.
Generally, if the claimed invention is either tied to a particular machine or apparatus
or transforms a particular article into a different state or thing, it may be patentable
under Bilski v. Kappos. Under Alice, if an abstract idea is transformed into a patenteligible
invention it is patentable.

11. Although the requirement of usefulness is not stringent, the invention must be of
some benefit to society to be useful. Thus, mere novelties or inventions that conflict
with scientific principles cannot be patented because they are not useful. The
usefulness must be present usefulness. For drugs, if a drug is useful for animals it
may be patentable, even though usefulness for humans cannot yet be shown.

12. To ensure that the invention is useful, the application must disclose or specify the
usefulness of the invention.

13. An invention or improvement to an invention must be novel. Thus, if an invention has
already been known or used by others before the filing date of the application, it is
not novel and is not eligible for patent protection.

14. Novelty.
After March 2013. Under the provisions of the America Invents Act (effective
March 2013), the United States moved from a “first-to-invent” system (in which a
patent was awarded to the first to invent) to a “first-to-file” system (in which a patent
is awarded to the first inventor to file the application for patent). The new “first to
file” system harmonized U.S. patent practice with that of nearly all other foreign
countries. The United States allows a one year grace period for U.S. applicants’ own
disclosures. Applicants’ own disclosures that occur within one year prior to filing will
not act as prior art so as to bar their applications. Similarly, disclosure by others
during that time based on information derived (directly or indirectly) from the
inventor will not constitute prior art so as to bar their applications.
Until March 2013.
Note: For information on novelty under prior 35 U.S.C. § 102 (and
until March 2013), see Appendix F.

15. The utility invention must be nonobvious to those having skill in the field or art to
which the subject matter of the patent pertains. The subject matter must be
sufficiently different from what has been used or described before that it may be said
to be nonobvious to a person having ordinary skill in the area of technology related to
the invention. Thus, the substitution of one material for another or mere changes in
size do not generally result in patentable inventions because they are obvious, while a
distinct improvement or a new use of a known process is patentable.

16. The method of determining nonobviousness is by reference to the prior art (the
generally available public knowledge relating to the invention for which a patent is
sought and which was available, such as information in existing patents, other
inventions, and printed publications).

After March 2013. Prior art is measured from the filing date of the application and
typically includes all art that publicly exists prior to the filing date anywhere in the
world, other than disclosures by the inventor within one year of filing. Prior art has no
geographical limitations. Disclosure anywhere in the world is enough to deal a death
blow to the patent application.

Until March 2013. Until the AIA was effective, prior art was measured from the date
of the invention.

17. According to Graham v. John Deere, the following factors are considered in
determining whether an invention is nonobvious and thus deserving of a patent:

• One must review the scope and content of the prior art in the pertinent field to
determine if an invention is nonobvious
• Consideration must be given to differences between the prior art and the subject
invention
• If the invention would be obvious to a person having ordinary skill (neither a
highly sophisticated expert nor a lay person) in the art to which the patent
pertains, it cannot be patented

18. In Graham, after listing the above factors, the Court suggested that some secondary
considerations could be taken into account in determining nonobviousness:

• Commercial success. An invention that is a commercial success may be
nonobvious because acceptance by the marketplace tends to show the invention is
significant
• Long felt need. If there has been a long-standing need for the device or process
despite the efforts of others to solve the problem, such tends to show the invention
is nonobvious (if it were obvious, others could have easily discovered it)—
similarly, initial skepticism by experts tends to show nonobviousness
• Commercial acquiescence. If competitors seek to enter into licenses with the
inventor, such tends to show nonobviousness (otherwise the competitors would
challenge the patent)
• Copying. Copying of the patent suggests nonobviousness because otherwise the
infringer would have been able to independently invent the item/process

19. The independent and near-simultaneous invention of like items/processes tends to
suggest obviousness. If it is easy for a number of people in the field to invent the
same product or process, it is likely obvious to those with ordinary skill in the art.

20. To ensure that courts do not over-rely on the secondary considerations discussed in
Graham, the Federal Circuit requires that parties demonstrate some link or nexus
between the secondary characteristic and the invention. Thus, commercial success
should be shown to be due to need/desire for the product and not heavy advertising.

21. The 2007 U.S. Supreme Court ruling in KSR International v. Teleflex tightened the
standards for obviousness and held that if a combination results from nothing more
than “ordinary innovation” and does nothing more than yield “predictable results,”
the invention is obvious and does not qualify for patent protection.

21a. Combination patents are eligible for protection if the unique combination makes the
invention novel and the combination is nonobvious.

22. A variety of items are excluded from patent protection, such as the following:

• Products of nature and naturally occurring substances (only man-made inventions
can be patented)
• Laws of nature such as the law of gravity, physical phenomena, math formulas,
scientific truths, and abstract ideas (although a machine or product that depends
on some law of physics or the law of gravity can be patented, and a computer
program can be patented in many instances)
• Atomic weapons
• Under the new AIA, human organisms and strategies directed to reducing,
avoiding, or deferring tax liability cannot be patented
• Nonuseful business methods and mental steps, such as a system for the operation
of a business unless it is more than an abstract idea (per the 2010 U.S. Supreme
Court decision in Bilski v. Kappos, discussed more fully in Chapter 21)
• Software patents require additional scrutiny after Alice. There is now a two-step
analysis to determine if a software-related patent is valid. First, the court or
USPTO must determine whether the claims are directed to an abstract idea. If so,
then it must be determined if the claims recite “significantly more” than the
abstract idea, such as an “inventive concept” that is sufficient to transform the
claimed abstract idea into a patent-eligible application. Alice Corp. Pty. v. CLS
Bank Int’l, 134 S. Ct. 2347 (2014).

23. A design patent is available for the invention of any new, original, and ornamental
design for an article of manufacture. Thus, design patents need not be useful (and, in
fact, cannot be purely functional) as long as they are ornamental. Design patents can
be obtained for jewelry, furniture, trash receptacles, and certain items/parts of
clothing. A design that is entirely functional without ornamental or decorative aspects
cannot be patented.

24. To be protectable a design must satisfy the following requirements:

• It must be an article of manufacture (something made by humans)
• It must be new (using the requirements of novelty discussed above for utility
patents)
• It must be original (the equivalent of the requirement of nonobviousness for utility
patents)—a design cannot be patented if a designer of ordinary skill would
consider the design obvious in view of the prior art
• It must be primarily ornamental rather than utilitarian—the article can serve a
useful purpose (such as a chair) but its primary purpose cannot be functional;
thus, if there are several ways that an item could be designed and yet still remain
functional, then any one design is likely ornamental rather than functional.

25. There is some overlap between copyrights and design patents and the same work (for
example, jewelry) can qualify for protection under both copyright and patent law.
Similarly, the same item (the shape of a bottle) may qualify for both trademark and
patent protection. Securing copyright protection is the easiest, fastest, and least
expensive means of protection for designs. Thus, if an item of jewelry might go out of
style in a few years, it might be best protected under copyright law, rather than going
through the time and expense of securing patent protection.

26. Plant patents have been recognized only since 1930. Whoever invents and asexually
reproduces any new and distinct variety of plant may obtain a patent for it. Rather
than demonstrating usefulness, plant patents must be distinctive.

27. There are four requirements that must be satisfied for a plant to be patented:

• The new variety must be asexually reproduced (asexual reproduction is
accomplished by taking cuttings and placing them in soil or by grafting—asexual
reproduction involves growing something other than from a seed)
• The plant must be distinctive—it must be distinguishable from other varieties,
perhaps as to color, flavor, shape, productivity, odor, or immunity to disease. It
must be different from (not necessarily superior to) another variety
• The plant must be novel (using the same standards as for utility patents)
• The plant must be nonobvious (using the same standards as for utility patents)

28. Although the most common way to protect a plant is through a plant patent, other
forms of protection exist. Under the Plant Variety Protection Act, certain sexually
produced plants can be protected through the award of a certificate issued by the
Department of Agriculture. The certificate owner can exclude others from selling,
offering, reproducing, or trading infringing plants. Plants also qualify for protection
as utility patents (assuming they satisfy the general requirements for utility patents).

29. The double patenting principle prohibits the issuance of more than one patent for the
same invention or for an invention that is substantially the same as that owned by an
inventor. The intent of this bar is to ensure that inventors do not make some minor or
insignificant change to an invention near the end of its patent protection term in an
effort to secure another 20-year monopoly on the invention. If design and utility
inventions coexist, inventors often insert a terminal disclaimer into their applications,
agreeing that the term of protection for the second invention will terminate upon
expiration of the patent for the first invention.

30. The Orphan Drug Act provides rights for certain drugs, which rights are similar to
patent rights, although the term of protection is shorter. The Act is intended to
encourage the production of drugs that ordinarily might not be invented or marketed
because relatively few people need the drug. The Act allows nonpatentable drugs to
be protected. Thus, drugs that lack novelty or nonobviousness and thus cannot be
protected as utility patents can be protected under this Act.