Intellectual Property Law

Chapter 21 Discussion Answers

1. Jason is the owner of a software patent (issued in 2010) for a business method that
is accomplished on a computer. After Alice, why might Jason be reluctant to
pursue another for infringement of this patent?
After Alice, software patents have been invalidated on the basis that
they are mere abstract ideas and implementing such an idea on a
computer is not enough to constitute patentable subject matter. Thus,
if Jason sues another for infringement of this patent, the defendant
might assert that the patent is invalid and invalidate Jason’s patent.

2. In 2012, Facebook acquired 750 patents from IBM. Why might Facebook have
engaged in this transaction?
Facebook may have acquired the patents because it intends to use the
technology embodied in the patents. On the other hand, it may have
wished to ensure its competitors did not acquire these patents or to
ensure that it has a portfolio of patents that it can assert if it is
accused of infringement, a practice called “defensive patenting.”

3. ABC Pharma Co. recently located two human genes, one of which it has
manipulated for the purpose of treating disease. Is either of these genes
patentable? Discuss.
Based upon the Supreme Court ruling in Myriad, a naturally
occurring gene cannot be patented because it is a product of nature. A
manipulated or altered gene may be patentable because gene or DNA
sequences altered by humans are not found in nature.

4. Michelle filed a utility patent application and a design patent application with the
USPTO on March 1, 2016. She would now like to file applications in Germany.
When must these applications be filed to capture the date of the prior U.S. filings?
The utility patent application must be filed within 12 months, or
before March 1, 2017. The design patent application must be filed
within six months, or before September 1, 2017.

5. In Question 4, what is the advantage to Michelle of capturing the earlier filing
dates?
The advantage of capturing the earlier filing date is that the later-filed
applications, because they are based on the dates of the first
application, will not be invalidated by some act accomplished in the
interval, such as sale or use of the invention. Similarly, the earlier
priority date is the effective filing date for determining whether prior
art precludes granting of patents for the inventions.

6. What is the advantage of entering Chapter II of the PCT?
An applicant who enters Chapter II of the PCT will receive an
international preliminary report on patentability, which, although not
binding, is highly authoritative, and states whether the claims satisfy
the criteria of novelty, nonobviousness, and industrial application.
This report will then be communicated to the various national offices
in which the applicant desires patent protection. The applicant may
then amend or delete claims and is in a strong position to judge
his/her chances of obtaining protection in various individual
countries. Finally, because much examination has been accomplished,
the process of securing actual patents in foreign countries during the
national phase should be expedited.

7. Hank intends to file a patent application in France. Discuss whether he should
simply file a national application in France or file a European patent application
with the EPO.
Because Hank intends to file for protection in only one European
country, he should likely pursue protection by filing the application in
France. There is no true advantage for Hank in filing with the EPO,
which is most useful when one wishes to pursue protection in several
countries at the same time.

8. In Question 7, would your answer change if Hank intended to seek patent
protection in ten European countries? Discuss.
Yes. In this case, Hank would likely save time and money by pursuing
a European patent that would have effect in each of the ten countries.
The patent would be the same in each country (rather than having
differing claims and descriptions as might be the case if the
application is pursued separately in each country).

9. Jill filed for a design patent on May 1, 2015. What is its term of protection?
Would your answer be different if she had filed the patent one month later?
Before the Hague Agreement effective date (May 13, 2014), the term
of protection for design patents was 14 years from issuance. Thus, if
Jill filed her application on May 1, 2015, the term would be 14 years
from issuance. If she filed her application on June 1, 2015, the term
would be 15 years from issuance.