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Intellectual Property

Intellectual Property. Boston College Law School February 18, 2009 Patent – Nonobviousness. Requirements. (1) Patentable Subject Matter (2) Novelty (3) Utility (4) Nonobviousness (5) Enablement. Nonobviousness. 35 U.S.C. § 103. Conditions for patentability; non-obvious subject matter.

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Intellectual Property

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  1. Intellectual Property Boston College Law School February 18, 2009 Patent – Nonobviousness

  2. Requirements • (1) Patentable Subject Matter • (2) Novelty • (3) Utility • (4) Nonobviousness • (5) Enablement

  3. Nonobviousness • 35 U.S.C. § 103. Conditions for patentability; non-obvious subject matter. • “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have beenobvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains …”

  4. Nonobviousness • Factors in the analysis • (1) Scope and content of prior art • (2) Differences between invention and prior art • (3) Level of ordinary skill in the art • (4) “Secondary considerations” • Commercial success • Long-felt but unsolved needs • Failure of others to invent • Copying by others

  5. KSR v. Teleflex

  6. In re Dembiczak

  7. Problem 3-10 • Claimed invention • Lollipop in shape of human thumb • Wrapped in a mold that can be worn • Contains gum inside lollipop • Prior art references • Siciliano: ice cream wrapped in a removable mold • Copeman: lollipops in various molds usable as balloons • Harris: hollow, thumb-shaped lollipop • Webster: chewing gum enclosing liquid syrup

  8. Nonobviousness • Secondary considerations • Commercial success • Long-felt but unsolved needs • Failure of others to invent • Copying by others

  9. Requirements • (1) Patentable Subject Matter • (2) Novelty • (3) Utility • (4) Nonobviousness • (5) Enablement

  10. Enablement • 35 U.S.C. § 112. Enablement • “The specification shall contain a written description of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms, as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the bestmode contemplated by the inventor of carrying out his invention.”

  11. Approval Process • File application w/ PTO • Review by PTO for patentability • Back and forth between applicant and PTO • Publication of some patent applications • Issuance or rejection of patent • Appeal to review board, CAFC • Reexamination procedure

  12. Sample Patent

  13. Edison • Sawyer & Man claim • (1) An incandescing conductor for an electric lamp, of carbonized fibrous or textile material …

  14. Enablement • 35 U.S.C. § 112. Enablement • “The specification shall contain a written description of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms, as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the bestmode contemplated by the inventor of carrying out his invention.”

  15. Gentry Gallery v. Berkline • A sectional sofa comprising: … • a pair of reclining seats disposed in parallel … • a fixed console disposed in the double reclining seat section between the pair of reclining seats … • and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section

  16. Berkline Sofa

  17. Administrative • Next Assignment • Read IV.C.1 and 2 • Into IV.C.3 – Doctrine of Equivalents • Through Festo

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