Patent Law Outline Alexandra Fulcher

Transcription

1 Fall 14 Patent Law Outline Alexandra Fulcher G o l d e n

2 Table of Contents The Patent System and Theories of Patent Law... 5 Overview of the Patent System... 5 Globalization and Patent Rights... 7 Theory Applied... 9 Patent Claim Drafting Terms, Rights, and Fees Correction, Reissue, Reexamination Patentable Subject Matter Bilski (Fed. Cir. 2008)(en banc) Biological Subject Matter Funk Bros. v. Kalo Inoc. (1948) Diamond v. Chakrabarty (1980) Natural Phenomenon Park-Davis (2nd Circuit 1912) O Reilly v. Morse (1854) AMP v. Myriad (SCOTUS 2013) Living Things In re Roslin (Fed. Cir. 2014) Harvard College v. Canada (Canada 2002) Mayo v. Prometheus (20102) Software, Business Methods, and Abstract Ideas Gottschalk v. Benson (1972) Parker v. Flook (1978) State Street Bank (Fed. Cir. 1998) Bilski (SCOTUS 2010) Alice v. CLS Bank (SCOTUS 2014) Policy Concerns Relating to Subject Matter Eligibility Utility Utility Basics Lowell (CCD Mass. 1817) Juicy Whip (Fed. Cir. 1999) Practical Utility Brenner (1996) and Brana (1995) In re Fisher (Fed. Cir. 2005) In re Deuel (FC 1995) In re Kubin (FC 2009) Novelty Novelty and Prior Art Alexander Milburn Co. (1926) Prima Tek (Fed. Cir. 2005) Therasense v. B.D. (F.C. 2010) In re Searborg (CCPA 1964) Tilghman v. Proctor (1880) Printed Publications and Patents Reeves Bros. (EDNY 1966)

3 Klopfenstein (Fed. Cir. 2004) Brown v. Barbacid (Fed. Cir. 2002) Peeler (CCPA 1976) Statutory Bars and Grace Periods Egbert v. Lippmann (1881) Moleculon Research (Fed. Cir. 1986) Metallizing Engineering (2nd Cir. 1946) Pfaff v. Wells Electronics (1998) Elizabeth v. ANP (1877) Post-AIA Novelty and Prior Art Nonobviousness Nonobviousness Overview Graham v. John Deere (1966) U.S. v. Adams (1966) Nonobviousness Today Clay (Fed. Cir. 1992) KSR v. Telefax (2007) Arkie Lures (Fed. Cir. 1997) Perfect Web (Fed. Cir. 2009) Arguing Nonobviousness International Law of Nonobviousness Disclosure Ariad Pharmaceuticals (2010) Incandescent Lamp Patent (1895) Gentry Gallery (Fed. Cir. 1998) Claim Construction Overview Abbott v. Sandoz (Fed. Cir. 2009) Interactive Gift (Fed. Cir. 2001) Phillips (Fed. Cir. 2005) Applications Gillette v. Energizer (CAFC 2005) SciMed (Fed. Cir. 2001) Acumed v. Stryker (Fed. Cir. 2007) Allergan v. Apotex (Fed. Cir. 2014) Markman v. Westview (1996) Cybor (Fed. Cir. 1998) Lightning Ballast (2014) Teva v. Sandoz Doctrine of Equivalents and Prosecution History Estoppel Winans v. Denmead (1854) Graver Tank (1950) Warner-Jenkinson (1997) Festo (2002) Unique Concepts (Fed. Cir. 1991) Infringement

4 Basic Forms and Exceptions Madley v. Duke (Fed. Cir. 2002) Aro v. Convertible Top (1964) Quanta Computer (SCOTUS 2008) Global-Tech v. SEB (SCOTUS 2011) Commil (Fed. Cir. 2013) Limelight v. Akamai (SCOTUS 2014) Microsoft v. AT&T (2007) NTP v. RIM (Fed. Cir. 2005) Remedies Amazon.com (Fed. Cir. 2001) ebay v. MercExchange (2006) Robert Bosch v. Pylon (Fed. Cir. 2011) Paice v. Toyota (Fed. Cir. 2007) Lucent v. Gateway (Fed. Cir. 2009) Defenses and Counterclaims Therasense (Fed. Cir. 2011) Monsanto v. Scruggs (Fed. Cir. 2006)

5 The Patent System and Theories of Patent Law Patent a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of the invention. 35 USC 154 right to exclude others from doing certain things with the patented invention/process: making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the U.S. Design patents 35 USC 171 ornamental aspect of an article of manufacturing; 14 year term. No maintenance fees or application publication. o Two-pronged test for infringement: ordinary observer test for substantial similarity or point of novelty test. Plant patents 35 USC 161 asexually reproduced plant varieties. Patent infringement 35 USC Theories of Intellectual Property: Utilitarian (welfare)(bentham) o Pro Patent: concern about competition from free riders driving profits below research and design costs; need for incentives to invent, develop, commercialize, invest, and disclose. o Anti-Patent: deadweight loss from increased prices and decreased output. Labor-Desert (natural right/fairness, Locke) Personality more directed towards copyright and self-expression, promoting individual human flourishment (Hegel) Culture the idea of generating an attractive culture, promoting the good life for society as a whole (W. Fisher, Aristotle) Overview of the Patent System Patentability Requirements: Subject matter eligibility Utility Novelty Nonobviousness Adequate disclosure o Written description o Enablement o Best mode Patent System Institutions 1. Congress 2. Executive a. USPTO: Director, board, examiners b. International Trade Commission (ITC) 3. Courts primary interpreters of patent law a. Supreme Court 5

6 b. Federal Court c. District Courts and Court of Federal Claims Sources of Patent Law and Guidance United States: Constitution Patent Act (35 USC) and other statutes Case Law CFR and MPEP o PTO International Paris Convention (1883) o Antidiscrimination with respect to citizenship o 1-year priority rule PCT o Procedures for applying internationally GATT TRIPS o Antidiscrimination with respect to technology. o Term, infringement, compulsory licensing. Patent Prosecution The average time from filing to issuance is approximately two to three years. Many patent applications become public after they have been pending for 18 months. An applicant is entitled to have each application considered at least twice before the examiner imposes a final rejection of the application. Options after a final rejection: o Do nothing and abandon the application. o Appeal the examiner s second rejection to the Board of Patent Appeals and Interferences. o Continue the prosecution through continuation practice (requires another fee) Continuation where the applicant makes changes only to the claims; the continuation application is treated as though filed on the date of the prior application. Continuation-in-part preserves the filing date of the original application only if the changes to the disclosure did not add any new matter. Section 132(b) of the Patent Act now requires the PTO to allow continued examination for a fee. o If the examiner s decision is affirmed by the BPIA, the applicant may seek judicial review by: Filing a petition for review in the Court of Appeals for the Federal Circuit. 6

7 Commencing a civil action against the Director of the PTO in district court. PTO decisions are reviewed for clear and convincing error. Anyone can seek a reexamination of a patent in certain circumstances. Enforcement Actions a lawsuit concerning a patent can arise in two ways: 1. The patentee brings an infringement action against an accused infringer. 2. A potential infringer files a declaratory judgment action against the patentee. The Patent Controversy in the 19 th Century, Fritz Machlup: If you have a patent system, keep it. If you don t, don t get one. Muddle through with what you have. Argument Framework 1. Legal Arguments a. Relevant text b. Context, textual, and circumstantial c. Drafter s intent/purpose/goals, implied or express d. Precedent or practice 2. Policy Arguments a. Utilitarian b. Labor-desert, personality, social planning Globalization and Patent Rights Inventors must obtain a patent in every country where protection is desired. The 1883 Paris Convention for the Protection of Industrial Property Created a uniform one-year rule of priority commencing with the first patent application filed in any convention country. The Patent Cooperation Treaty and the European Patent Convention PTC is less dramatic and applies to more countries. A PTC application has two phases: 1. International phase an international searching authority conducts a prior art search. 2. National phase the applicant must prosecute the application through the patent office of each country where protection is sought. The EPC established the European Patent Office, which performs the tasks of searching the prior art, examining the application, and determining patentability. If the examination process concludes in favor of the applicant, the EPO is authorized to issue a patent that provides rights in all EPC countries designated by the applicant. EPC Limitations: only applies to 20 European nations; unifies only the administrative functions of national patent systems. 7

8 Trade Related Aspects of Intellectual Property (TRIPs) The Uruguay Round of negotiations to revise the main international trade agreement, the General Agreement on Tariffs and Trade (GATT) also encompassed negotiations on the Trade Related Aspects of Intellectual Property. The World Trade Organization was also created. Not much recourse is available for private parties under TRIPS. If you believe that a country is violating TRIPs, you must go to your country and petition them to represent you at the WTO. If the country is found to be in violation of TRIPs, then trade sanctions may be imposed against the country. Members of the WTO are obligated to: Include virtually all important commercial fields within the ambit of patentable subject matter. Test patent applications for the presence of an inventive step and industrial application, similar to the nonobviousness and utility requirements. Include the exclusive right to import the invention. Curtail the practice of granting compulsory licenses for patented technology. TRIPs also requires signatory nations to establish certain civil and administrative procedures. Changes in US law in response to TRIPs (found in the Uruguay Round Agreements Act): Changed the expiration date of US patents to 20 years from the date the patent application is filed. Opened up the US first to invent system. Expanded the definition of infringement to include the acts of unauthorized offering for sale and importing. Added a new procedure for filing provisional applications. o Provisional application attributes: i. They can be used to establish a right of priority for a regular application filed within one year of the provisional application. ii. The time during which a provisional application is pending does not count toward the new twenty-year patent term. In effect, a provisional application permits an applicant to obtain a patent termination date twenty-one years after the patent s priority date. U.S. Moves to Harmonize Term: issue to 20 years from filing date o Possible extensions. o Applications predating 6/8/1995, longer of above and 17 years from issue. a. Rate of applications increased dramatically before June 8, so that patent holders could have the choice of 17 or 20 years. Similar effect in March 2013, before the first to file rule went into effect. Application publication: default after 18 months. First to File? 8

9 o 2011 AIA US variant (with grace period) o Referred to as a first-to-file-or-disclose system. Opposition proceedings? o 2011 AIA new post-grant review. Theory Applied Empirics & IP Alternatives: Levin et.al. (1987) Qualitative Survey: respondents = high-level R&D executives of publicly traded manufacturing companies. Noted differences between industries. Other means to capture R&D value: Lead-time advantages Complementary investments or like o Related assets or services o Learning-curve advantages o Sales and customer service advantages Secrecy The Patent Document: Statutory Rules and Requirements: 35 USC 112 a. Written description, enablement and best mode requirements b. Claims and claim definiteness c-e. Independent, dependent and multiple dependent claims f. Means-plus-function and step-plus-function limitations. Terminology: Independent v. Dependent Claims Independent: 1. A razor comprising a blade. Dependent: 2. The razor of claim 1 further comprising a handle to which the blade is attached. 3. The razor of claim 2 wherein the blade is made of stainless steel. Why use dependent claims? To specify, narrow scope, narrow liability regarding prior art. The Patent Document Parts: Cover Page o Patent number and inventor o Filing and issuing dates o Cited references o Title and abstract Figures Description Claims Policy and Preemption: Bonito Boats (1989) 9

10 Background In 1976, Bonito, a Florida corporation, began selling 5VBR hull. In 1983, Florida enacted law barring "direct molding" to copy vessel parts for sale. In 1984, Bonito sued Thunder Craft, a Tennessee corporation. J. O'Connor's Opinion for the Court Constitution and Patent Act "have embodied a careful balance between" o Promoting innovation, and o Permitting competitive imitation and refinement. Patent reflects "a carefully crafted bargain": o Inventor's disclosure of novel, nonobvious, and useful invention; o Government's grant of time-limited "right to exclude." State law "must yield to the extent it clashes with Congress' balance." o Patent law's effectiveness requires a backdrop of free competition. o States may protect TMs and trade secrets. o States may not offer patent-like protection to intellectual creations unprotected by federal law. Multi-factored analysis supports the conclusion that Florida law is preempted: o Subject matter o Purpose o Nature of protection o Term of protection o Requirements for protection. Patent Claim Drafting Claim Structure Preamble ( A razor ) o Generally ignored, unless the preamble is necessary to breath life and meaning of the claim. The preamble may be used later to narrow the claims of the patent. It should not sell the patent by talking of its advantages this is for the specification. Transition ( comprising ) o Comprising Open claims; claimed elements can be infringed even if the claim only covers a portion of the accused implementation. o Consisting of Closed claims: a narrow claim, limits implementations to the claimed elements and nothing further. This is often used in crowded fields to avoid prior art. o Consisting essentially of In-between claims; can cover products that add additional elements, if they do not essentially differ from the patented material. Body ( a blade ) o Everything else in the claim. 10

11 o Lists the elements of the invention (parts and features). o Describes how those elements interact. Claim Charts Facilitating element-based analysis Questions regarding definition of an element o Judgment required to break claim up. Used for infringement and validity analyses. Formal Requirements for Claim Drafting: 1. The entire claim must be stated in the form of a single sentence. 2. The claim must set forth how each element interacts with at least one other element. 3. Any internal references must by clear. Means-Plus-Function Elements Patent claims containing means-plus-function elements shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. A means-plus-function element can only be used in combination with at least one other element. Jepson Claims Specifically designed for claiming improvements. The transitional phrase claim is typically wherein the improvement comprises or something similar. Terms, Rights, and Fees Terms Term = 20 years from the effective filing date. Unless the patent was in force on or resulting from application filed before 6/8/1995. Provisional Rights The patent is published automatically after 18 months from filing. o But the patent term is 20 years from the filing date. o You get provisional rights between publishing and when the patent actually issues. If the patent issues before publishing, not an issue. Reasonable royalty available for infringement of a claim in a published patent application with actual notice. Fees You pay fees 3.5, 7.5, and 11.5 years after a patent grant. o The patent doesn t automatically remain effective unless you pay the fee. o If you fail to pay the fee, you can sometimes get the USPTO to forgive the error. But only for clerical or process-type errors, not errors in judgment. 11