Patent Overview

1. Patent Overview by Jeff Woller

2. Why have Patents? Patents make some people rich – but, does that seem like something the government should protect? Do they hinder the pace of technological developments?

3. Patents Are Constitutionally Provided Article 1, Clause 8 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

4. Four requirements for a patent • Statutory • Useful • New • Non-obvious

5. Statutory & Useful • 35 U.S.C. § 101 • 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.

6. What is Useful? • Must produce a “concrete and tangible result.” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373-74 (Fed. Cir. 1998) • “anything under the sun that is made by man” Diamond v. Chakrabarty, 447 U.S. 303, 308-9 (1980) • Not an abstract idea, law of nature, or natural phenomenon

7. New • 35 U.S.C. § 102 • A person shall be entitled to a patent unless - • (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or • (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or • (c) he has abandoned the invention, or • (d) the invention was first patented …on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

8. 35 U.S.C. § 102 • (e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, …; or • (f) he did not himself invent the subject matter sought to be patented, or • (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

9. Non-Obvious 35 U.S.C § 103 • (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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 been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

10. Types of Patents & Applications • Plant patents and applications (1930) • Design patents and applications (1842) • Utility patents and applications (1790) • Provisional applications (1995)

11. 35 U.S.C. § 112 • Applies to design and utility applications • First Paragraph – • 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 best mode contemplated by the inventor of carrying out his invention. • Second Paragraph – • The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

12. Provisional Applications • Are exempt from the second paragraph of 35 U.S.C. § 112 • Do not require formal drawings • But, must comply with the first paragraph of 35 U.S.C. § 112 • Are never examined, and cannot become a patent

13. Two Common Mistakes • Knowing the U.S. provides one year after a public use, disclosure, offer for sale, or sale to file a patent application. • The rest of the world does not.

14. The Other One • “Hidden” use – if the invention can’t be seen… • Hallv. Macneale, 107 U.S. 90, 96-97 (1882); Ex parteKuklo, 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter. 1992) (Display of equipment including the structural features of the claimed invention to visitors of laboratory is public use even though public did not see inner workings of device. The person to whom the invention is publicly disclosed need not understand the significance and technical complexities of the invention.).