1) US Constitution- Article 1 § 8

2) 35 USC § 101 et seq.

3) 37 CFR § 1.1 et seq.

4) MPMP= Manual for paten examining procedure

Article one § 8 of U.S Const is where you find the basis of paten law “to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive rights to their writings and discoveries.

What is the Appeals process for Patents?

Where can you sue for patents and why?

Appeal process- Starts with Supreme court- from court of appeals/fed circuit.. You can get to this either through the PTAB (patent trial and appeal board) or from the U.S. D.C. ED VA. The first appeal will go from the examiner to the PTAB and then you get to choose whether your want to got to the fed circuit or the US District Court.

You could sue in either one depending on if you want to introduce new evidence, and then you would go to district court.

1) Machines

2) Processes

3) Compositions

4) Articles of Manufacture

Type of Utility Patent- something that has moving parts

Type of utility patent- a series of steps that are arranged in a particular order (i.e. making cookies is a process).

Compositions of matter

Can this include living things?

Type of Utlity patent- - when you think about this it is everything from the atomic all the way up to the macroscopic…. So creating a molecule could be a composition or like a pill that mixes molecules and a paste; something like a new kind of concrete; this can include livings things (i.e. the hairless mouse for laboratory testing or like a GMO tomato that has a thicker skin); genetically modified crops.

Type of utility patent- anything that is made by human hands; it’s a catchall in case the invention doesn’t fall into the previous three categories; think of it as something that does not have moving parts

Utility patents get 20 years from the filing date.

the ornamental features of a particular thing. Those are the way in which something looks. Just the way that it looks can be protected by design patent.- For design  (old) 14 years from issue dates; Now is 15 years from the issue date (look at when the appln was filed). If the design is different enough then you will have a new design that is patentable.

for asexually reproducing plant varieties.- result of cross-pollination but have done so to acquire certain qualities.- cannot reproduce via pollen. A clipping is made and then grown being graft it on to plant. So basically the plant patent is for a specific genetic plant that is always the same genetically- plant patent expires 20 years from the filing date of the patent application

Can you have more than one patent on the same product?

How is this possible?

For design and utility patent you can have more than one patent for the same product (i.e. a car you could have a utility patent on the engine and a design patent on the design of the light fixture).

What kind of entity grants patents?

What does this mean for enforcing your patent rights?

Patents, like copyrights are entirely federal so that if you are obtaining a patent, it can only be granted federally and if you appeal or sue, it has to be in federal court.

the right to prevent others from

1) making

2) using

3) selling

4) offering for sale

5) importing the patented invention.

(use your basic understanding of what this means and that will be fine for class).

Once the patent expires- that means the subject matter of the patent becomes a part of the public domain so everyone is free to use.

First to Invent (before March 16, 2013)- If you were the first inventor to invent, you got the patent.

First Inventor to File (after 3/16/13)- the rest of the world cares about who was the first to file the application gets the patent; The US today has this weird hybrid, so basically if the you are the first inventor to get the application on file, you will get the patent.

So we aren’t either one- this is because of the way the constitution is written stating that the rights go to the inventor.

Rule 0) Is this particular invent statutory subject matters means that is has to be a machine, process, composition or an article of manufacture. In a weird way it covers almost everything.

1) The invention must have utility or that the invention must have or must function for its intended purpose.

2) Novelty- Invention must be novel- this means that it has not been done before; or it is entirely new. So if you live in a world with only blue pens and then someone comes up with a red pen, then it is novel.

3) Non-obviousness (there is some advancement in the art (i.e. science area)).- There are facts you need to determine to make the obviousness- So if you can just take ink off the shelf and put it into a pen, not obvious; but if it takes scientists 10 years to create the red inked pen, then it would not be non-obvious. This could be something that is just completely non-obvious or just a substitution. Non-obvious does not mean that it’s a huge advancement but it has to be an advancement of some kind

0) Article of manufacture

1) Ornamental- pretty self explanatory- see above explanation

2)) Novel

3) Non-obvious

For Utility Patents- 0) Is this particular invent statutory subject matters means that is has to be a machine, process, composition or an article of manufacture. In a weird way it covers almost everything.

1) The invention must have utility or that the invention must have or must function for its intended purpose.

For design patents-  0) Article of manufacture

1) Ornamental- pretty self explanatory- see above explanation

For plant patents- 0) Act of man

1) Asexually reproducing- it has to have some type of identifiable characteristics that are associated with that particular plant variety. The identifiable characteristics are any kind of think that is going to distinguish that particular plant variety from other kinds of plant variety. (i.e. an apple tree that only gives purple apples)- it is something that is specific to that variety

How do define utility patents? (i.e. the methods that we use).

Why?

 utility is so incredibly broad is that is easiest to define what is not rather than what it is:

 Utility (35 USC § 101) 

What does this govern?

What is not patentable as a utility patent?

What par of the code has this?

1) Illegal (i.e. a printing press that could ONLY print counterfeit money)

2) Deceptive- things which by their very nature are trying to deceive a consumer (i.e. when you grow tobacco there are plants that are worth more and others that are less and the ones with spots were more expensive than the ones that did not. So a farmer who grew plants without spots and developed a process to put the spots on, this was deceptive and not patentable)

3) Things that are violations of laws of nature- (“perpetual motion machine”- a battery that will never loose its charge; this isn’t actually something that can exist under the laws of physics; chemistry; etc. and therefore cannot be patented because they utility).

4) Novelty 35 USC § 102 (pre- 3/16/13)- You can loose novelty if you wait to long to file because we want to protect things that are new but don’t want people to sit on it so that in can eventually be for public use. When we say something is novel we define it in the negative:

a)- i. If other people knew about the invention before the date of invention in the US.- if other people knew about it before you claimed you invented it, you didn’t really invent it.

ii.  If it was in a printed publication (just means its available- so one copy in a library is sufficient to invalidate a patent) before the date of invention that was printed anywhere in the world- so if your invention was published anywhere in the world before you claimed you invented it you can’t get it because it’s not new.

b) i.  IF the patent application is filed more than one year after first public use- If you could see it in public then it cannot be patented

(The one exception to this is if that particular use in public was considered experimental use- you are actually experimenting on the invention in public because it is the only way that you can experiment on it, it public. So if you have a new road surface then you could test this on a public road and still have it in public use for more than ay ear. Experimental use has to be non-commercial and keep logbook about experiments, etc.). If it even looks as if it’s commercial use, then there’s no way you will get the patent.

ii. After the patent application is filed more than one year after an offer for sale (“on sale” bar is what this is referred to.) On sale is exactly what you think it is…. All you have to do is offer it to someone else; it could be totally private and no one else could see or hear but it would still invalidate it if it was one year before the filing date.

c) You cannot get a patent if you abandoned your invention.

d) If you file a foreign application and are granted a foreign patent more than one year before filing in the US/

e) No patent if a patent issues on an application filed before the date of the invention.

File dates > 18 months > publishes> issue

Basically if someone else file a patent application and it is totally secret and only known to the patent office, then it can count against me because it was filed before you invented it.  Because this is secret and you wouldn’t know they reword to state that if the patent application issues before the date you claim as your invention

f)- cannot get a patent if you were not the inventor.

g) First to invent- gives the mechanism to determine whether or not you were the first to invent- this is called an interference- the two parties involved would be trying who 

Cannot get a patent if:

i. If other people knew about the invention before the date of invention in the US.- if other people knew about it before you claimed you invented it, you didn’t really invent it.

ii.  If it was in a printed publication (just means its available- so one copy in a library is sufficient to invalidate a patent) before the date of invention that was printed anywhere in the world- so if your invention was published anywhere in the world before you claimed you invented it you can’t get it because it’s not new.

Novelty in relation to patent being in the public?

What is the exception to this?

) i.  IF the patent application is filed more than one year after first public use- If you could see it in public then it cannot be patented

(The one exception to this is if that particular use in public was considered experimental use- you are actually experimenting on the invention in public because it is the only way that you can experiment on it, it public. So if you have a new road surface then you could test this on a public road and still have it in public use for more than ay ear. Experimental use has to be non-commercial and keep logbook about experiments, etc.). If it even looks as if it’s commercial use, then there’s no way you will get the patent.

ii. After the patent application is filed more than one year after an offer for sale (“on sale” bar is what this is referred to.) On sale is exactly what you think it is…. All you have to do is offer it to someone else; it could be totally private and no one else could see or hear but it would still invalidate it if it was one year before the filing date.

You cannot get a patent if you abandoned your invention. If you abandon it, it is no longe considered novel

) If you file a foreign application and are granted a foreign patent more than one year before filing in the US/

Novelty and in relation to filing date of another application

How is this influenced by publication/secrecy

 No patent if a patent issues on an application filed before the date of the invention.

File dates > 18 months > publishes> issue

Basically if someone else file a patent application and it is totally secret and only known to the patent office, then it can count against me because it was filed before you invented it.  Because this is secret and you wouldn’t know they reword to state that if the patent application issues before the date you claim as your invention

cannot get a patent if you were not the inventor.

gives the mechanism to determine whether or not you were the first to invent- this is called an interference- the two parties involved would be trying who actually qualifies as the first inventor- a bunch of people fighting over who first invented the cheesy crust pizza.

How do we determine if something is patentable for a plant patent?

0) Act of man

1) Asexually reproducing- it has to have some type of identifiable characteristics that are associated with that particular plant variety. The identifiable characteristics are any kind of think that is going to distinguish that particular plant variety from other kinds of plant variety. (i.e. an apple tree that only gives purple apples)- it is something that is specific to that variety

2) Novel

3) Non-obvious