Patentable Subject Matter Utility Novelty Disclosure Req Non-obvious Patentable

Transcription

1 Patentable Subject Matter Utility Disclosure Req. 112 Novelty Non-obvious Patentable

2 Patents 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. 35 U.S.C. 101 WAS a Broad; permissive approach Threshold test; coarse filter Is this a policy question; balance Or simply mechanically applied?

3 Patents Exceptions Three judicial exceptions (Not patentable subject matter) laws of nature natural phenomena abstract ideas These exceptions are part of the storehouse of knowledge of all men... free to all men and reserved exclusively to none. (Funk Brothers)

4 Patents 101 Laws of Nature Mayo v. Prometheus What is the law of nature? Are any steps added to it?

5 Patents 101 Laws of Nature Must add enough; must apply law of nature Cannot simply add wellunderstood, routine, conventional activity Do claims preempt any/all use of law of nature?

6 Patents 101 Laws of Nature [C]oncern that patent law not inhibit further discovery by improperly tying up the future use of laws of nature Mayo. Deny patents on basic tools of scientific and technological works Compare to Diamond v. Diehr (Arrhenius equation used in rubber curing machine) Parker v. Flook (algorithm that calculates alarm limits in catalytic conversion of hydrocarbons)

7 Step 2. Do the claims contain an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent on the ineligible concept itself? (an inventive concept ) Patents 101 Laws of Nature Mayo gives us our modern approach: Step 1. Are the claims at issue directed to abstract ideas, laws of nature, or natural phenomena? If so then

8 Patents 101 Abstract Ideas Alice Corp. v. CLS Bank (S.Ct. 2014)

9 Patents 101 Abstract Ideas Alice Corp. v. CLS Bank (S.Ct. 2014) Follow Mayo Two-Step Approach If Claim is directed to an abstract idea then need an inventive concept / something more

10 Patents 101 Abstract Ideas What s the concern? Claim 35 in CLS Bank Riskmanagement agreements Downstream invention improve administration of risk-management relationships + computer elements to record and automate Directed to an abstract idea? If so do claims contain an inventive concept?

11 Patents 101 Abstract Ideas Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014))

12 Patents 101 Natural Phenomena Asso c for Molecular Pathology v. Myriad Genetics (S.Ct. 2013)

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14 Step 2. Do the claims contain an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent on the ineligible concept itself? (an inventive concept ) Patents 101 Laws of Nature Mayo gives us our modern approach: Step 1. Are the claims at issue directed to abstract ideas, laws of nature, or natural phenomena? If so then

15 Patents 101 Natural Phenomena What is the product of nature? Isolation of sequence does not save claims Claims are not to a chemical composition, but just the genetic information Separation is not an act of invention cdna claims are patentable Not naturally occurring What about method claims?

16 Basic Concern? Preemp1on of an Excep1on Claim Excep1on Law of Nature; Natural Phenomena; Abstract idea

17 Basic Concern? Inven1veness? Exception Law of Nature; Natural Phenomena; Abstract Idea Well-understood, conventional Eligible Technological Development

18 Patents 101 Laws of Nature

19 Patents 101 Abstract Ideas

20 Patents 101 Utility 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. 35 U.S.C. 101 Operable or capable of use Real question for intermediate chemical and biological products Matter of when do we award patents

21 Patents 101 Utility Brennar v. Manson Appeal from denial of patent at PTO Process claim process for producing steroid Evidence that a related steroid inhibits tumors No substantial utility Does it matter that the process works? How specific does supporting evidence need to be to establish utility?

22 Patents 101 Utility In re Fisher Appeal from denial of patent at PTO Claim 1. A substantially purified nucleic acid molecule that encodes a maize protein or fragment thereof comprising a nucleic acid sequence selected from the group consisting of SEQ ID NO: 1 through SEQ ID NO: 5. Has uses 7 listed on p. III-101 But no substantial utility Not grant patent this early in development process Patentable subject matter?

23 Patents 101 Utility

24 Patents 112(a) Disclosure In General -- 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. 35 U.S.C. 112(a).

25 Patents 112(a) Disclosure Look at claim, and then determine does specification discloses it? O Reilly v. Morse Discloses telegraph I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electromagnetism, however developed, for making or printing intelligible characters, signs or letters at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer

26 Patents 112(a) Enablement The Incandescent Lamp Patent Claim bulb Claim 3 carbonized paper Claim 1 carbonized fibrous or textile material What does the specification enable?

27 Patents 112(a) Enablement Look at claim, and then determine does specification enable it? Must teach to make and use claim Don t have to actually make A person having ordinary skill in the art ( PHOSITA ) Without undue experimentation Ensure truly goes into public domain Also patents as warehouse of knowledge

28 Patents 112(a) Enablement

29 Patents 112 (a) Written Description Specification must describe the claim [R]easonably conveys to [the PHOSITA] that the inventor had possession of the claimed subject matter as of the filing date. Look at the level of detail Difference in scope b/w disclosed species and claimed genus Do not have to actually make And external evidence is irrelevant

30 Patents 112(a) Written Gentry Gallery Description

31 Patentable Subject Matter Utility Disclosure Req. 112 Novelty Non-obvious Patentable

32 Patents 112(a) Disclosure In General -- 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. 35 U.S.C. 112(a).

33 Patents 112(a) Written Gentry Gallery Description Controls on console Claim 1 Controls in any location Do this example describe all of the claim?

34 Patents 112(a) Written Description Can enable but not describe particularly if enable by normal experimentation Concern is hunting license Mere research plans don t create patent rights Lockean aspect only get reward for specific effort (description?) But want to give inventor effective protection More than just what exactly disclosed

35 Patents 112(a) Does this enable a nylon wire cutter? Describe one?

36 Patents 112(a) Best Mode Two prong inquiry Subjective did inventor believe best mode? Objective is it a mode regarding the invention (the claim)? AIA 15 now only applies when getting the patent not in litigation

37 Patents 102(a) Novelty (Old School) 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 Applies to all patents effectively filed before March 16, 2013

38 Patents 102(a) Novelty before the invention by others Invention Date Filing Date & Presumed Invention Date

39 Patents 102(a) Novelty known or used... in this country Rosaire 525 Patent and 085 Patent filing date Sept. 26, 1939 say invent in 1936 Teplitz, in , performed invention in Palestine, TX Does this mean known or used? Must have all elements of the invention As long as not secret

40 Patents 102(a) Novelty patented... or described in a printed publication In re Hall Application filed on Feb. 27, 1979 German dissertation allegedly anticipates submitted to dep t in Sept get Ph.D on Nov. 2, 1977 sent to library on Nov. 4, 1977 When is it a publication? public accessibility at least to the public interested in the art

41 Patents 102(b) Statutory Bar (Old School) A person shall be entitled to a patent unless (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 similar two categories as in 102(a) but in this country limitation is focused on use or sale, not known

42 Patents 102(b) Statutory Bar 1 year grace period Anyone! Filing Date 1 Year Filing Date

43 Patents 102(b) Statutory Bar public use or on sale Egbert RE5216 filed Mar Made/tested it Jan-May 1855 intimate friend uses, wears in public, shows to Mr. Sturgis is this a public use? fact not visible irrelevant looking for restrictions/secrecy What about 102(a)?

44 Patents 102(b) Statutory Bar Experimental Use Exception City of Elizabeth used on stretch of toll road 6 years before filing patent Meet the 102(b) requirements? Why not 102(a)? Was it experimental use? exercise control? need for use? Impact on invention date

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47 Patents AIA Move to First-to-File Passed on Sept. 16, 2011 First to File went into effect for new applications filed on or after March 16, 2013

48 Patents NEW 102(a) Novelty (a) Novelty; Prior Art. A person shall be entitled to a patent unless (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or What s Old What s New

49 Patents NEW 102(a) Novelty (a) Novelty; Prior Art. A person shall be entitled to a patent unless (2) the claimed invention was described in a patent issued [to another]... or in [another s] application for patent published... [that] was effectively filed before the effective filing date of the claimed invention. Someone else filed first this is First-to-File Concept of priority

50 Patents AIA How is it different? A invents an invention on Day 1. B invents the same on Day 2 and files for a patent that same day. A, never telling anyone about the invention, files for a patent on Day 10. What result? Old law? A get s patent (generally), because ok under 102(a) (not before invention) and 102(b) (not more than one year prior) New Law? B get s patent, because effectively filed before the filing date of A 102(a)(2).

51 Patents AIA How is it different? G publicly uses an embodiment of an invention in Hungary. It is never seen or learned about by anyone in the United States. G never files a patent application anywhere. H, who had invented earlier than G did, files a U.S. application two months after the Hungarian disclosure. What result? Old law? Ok under 102(a) (not before invention; not in US) Ok under 102(b) (not more than one year prior; not in US)

52 Patents AIA How is it different? G publicly uses an embodiment of an invention in Hungary. It is never seen or learned about by anyone in the United States. G never files a patent application anywhere. H, who had invented earlier than G did, files a U.S. application two months after the Hungarian disclosure. What result? New law? 102(a)(1) problem no longer geographic restriction keyed from filing date, not date of invention

53 Patents NEW 102(a) Novelty before... filing date Invention Date Filing Date

54 Patents NEW 102(b) Exceptions (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art... under... (a)(1) if (A) the disclosure was made by the inventor... ; or (B) the subject matter disclosed had, before such disclosure,... been publicly disclosed by the inventor (1)(A) is a 1 year grace for inventor s own disclosures (kinda like the old 102(b)) (1)(B) rewards the earlier disclosure

55 Patents NEW 102(b) Exceptions (2) A disclosure shall not be prior art to a claimed invention under... (a)(2) if (A) the subject matter disclosed was obtained directly or indirectly from the inventor... ; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor... or (C).... Again, (2)(B) protects first to disclose

56 Patents NEW 102(b) Novelty 1 year or less Invalidating publication from inventor OK publication from inventor Filing Date

57 Patents NEW 102(a), (b) Prior art in 102(a) Excep&ons in 102(b) 102 (a) (1) Printed publica1ons, public uses, etc. before filing date 102 (b) (1) (limited to 1 year only!) (A) Any disclosure coming from the applicant (B) Disclosures by others made aper a public disclosure by the applicant. 102 (a) (2) 1 st filed U.S. patent applica1on by another 102 (b) (2) (A) 1 st filer derived inven1on from 2 nd filer. (B) 1 st filer filed aper public disclosure by applicant/2 nd filer.

58 Patents AIA Public Disclosure A invents an invention on Day 1. B invents the same on Day 2, never discloses. A publicly discloses invention on Day 3. B files a patent on Day 4 and A files a patent on Day 5. Who prevails? Under 102(a)(2) B has earlier effective filing date BUT 102(b)(2)(B) A publically disclosed before B filed Under 102(a)(1) Disclosure before A filed BUT 102(b)(1)(A) disclosure by A (inventor) And made less than 1 year before filing

59 Patents AIA Public Disclosure A invents an invention on Day 1. A then publically discloses on Day 2. B invents and publicly discloses on Day 3. A files a patent on Day 4. Who prevails? Under 102(a)(1) Disclosed before A filed BUT 102(b)(1)(A) disclosure by A (inventor) And made less than 1 year before filing What if A s disclosure secret? No patent under 102(a)(1) What if A waited to file 366 days after B s disclosure? Beyond 1 year grace period (b)(1)(B)

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62 Patents AIA Final Thoughts Scope of possible prior art broader (no geographic limitation) Filing early (or at least disclosing and then filing early) is encouraged Case law on what is a public use or printed publication likely still applicable But what about experimental use?

63 Patents -- Nonobviousness 35 U.S.C. 103 [OLD] (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.

64 Graham v. John Deere Diff. b/w 811 Patent Disclosure and 799 Patent claims: no stirrup and bolt disclosed shank position reversed

65 Patents Graham Factors Graham Factors (1) the scope and content of the prior art are to be determined (2) differences between the prior art and the claims are to be ascertained (3) the level of ordinary skill in the pertinent art resolved (4) [a]gainst this background the obviousness or nonobviousness of the subject matter is determined (5) secondary considerations.

66 Patents Graham Factors GAP =? Obvious

67 Graham v. John Deere Diff. b/w 811 Patent Disclosure and 799 Patent claims: no stirrup and bolt disclosed shank position reversed

68 Patents Obviousness after AIA A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made 35 U.S.C. 103

69 Patents -- KSR Do they qualify as prior art? (Step #1) Asano (patented 1991) Chevy/GM (public use 1994) Both 102(b) (Teleflex effectively filled 1999) Asano Chevy/GM Step #2 4(a) Adjustable Pedal 4(b) Electronic Sensor at Pivot Point

70 Patents Teaching, Suggestion, Motivation Flexible TSM Non- Exclusive =? Obvious

71 Patents Common Sense Common Sense Common Sense =? Obvious

72 Patents Ordinary Creativity PHOSCITA Ordinary Creativity =? Obvious

73 Patents Design and Market Forces Design Incentives and Market Forces =? Obvious

74 Patents Predictability Predictable Result? =? Obvious

75 Patents Predictability Predictable Result? =? Obvious

76 Patents In re Kubin Scope and content of prior art (Step #1) Patent filed in (Valiante) Patent (issued 1994) Both 102(a) and 102(b) Sambrook book (published 1989) Both 102(a) and 102(b)

77 Patents In re Kubin Step #2 Sambrook conventional techniques to isolate and sequence genes Step #3 Valiante p38 Claim 73 genius of isolated polynucletides

78 Patents In re Kubin Predictable Obvious to Try =? Obvious

79 Patentable Subject Matter Utility Disclosure Req. 112 Novelty Non-obvious Patentable

80 Patents Graham Factors Graham Factors (1) the scope and content of the prior art are to be determined (2) differences between the prior art and the claims are to be ascertained (3) the level of ordinary skill in the pertinent art resolved (4) [a]gainst this background the obviousness or nonobviousness of the subject matter is determined (5) secondary considerations.

81 Patents -- Leapfrog Do they qualify as prior art? (Step #1) Bevan (patented 1973) Super Speak & Read (on sale 1991) Reader (known from skill in the art) All 102(b) (effectively filled 1995) What about this art under the new 102?

82 Patents -- Leapfrog Step #2 Step #3 25(a) housing w/ switches (b) processor and memory (c) leber assoc. w/ switch (d) reader (e) select leber=assoc. sound Bevan SSR Reader

83 Step #4 Common Sense TSM Design Incentives and Market Forces =? Obvious

84 Patents Final Step -- #5 Objective Evidence (Secondary Factors) Commercial success Long-felt unsolved need Failure of others Copying Unexpected results Perfect Web discussion

85 Patents Obviousness after AIA A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made 35 U.S.C. 103

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88 Patents Administrative Challenges to Validity Typically, once patent issues challenge is in federal court overcome presumption of validity But other ways to challenge Pre-AIA (and still around) Ex Parte Reexamination Post-AIA Post Grant Review Inter Parties Review Third Party Submission