#11821 - Patent Attack - Patent

JUST TRY TO CLAIM THEIR INVENTION. WHAT THEY DID THAT WAS NEW.

Formatting: (Goal is to define the boundaries of your property rights).

-Single sentence requirement. Can’t have to independent clauses.

0) Preface/introduction: “what I claim is…

-doesn’t have to be ornate.

1) Preamble: “a bacterium from the genus X…”

-noun that is the object of the sentence

-giving purpose doesn’t limit it to only that purpose unless the language is necessary or essential.

2) Transition word: “containing therein

*presumption of open format unless there is some limiting language.

-comprising = (open claims) includes the elements described thereafter and anything that includes each those elements PLUS anything else. Open class.

-consisting essentially of = (in between) includes elements described thereafter and anything that includes those elements AND addition of elements that don’t change the essential function/properties of the compositon. (ex: coloring dye added on).

-consisting of = (closed claims) includes nothing but the things described after.

*better for unpredictable fields, where slight changes could change properties.

-“By causing” (makes sense for methods).

-‘wherein the improvement comprises’ for improvement patents. (Jepson claims).

3) BODY: Describe the elements, sub-elements, and how they connect

-Dependent claims: reference prior claim, incorporate all its limitations by reference + add more.

-further transition,=>sub-elements.

-“wherein” to change subject. “Part C, attaching said part A; wherein said pt A is made of gold”

POTENTIAL ISSUES:

-The broader the claim, the harder it will be to patent the invention.

*NEED an antecedent basis in the specification, prior claims, or PHOSITA knowledge.

-New elements introduced w/ “a/an X”

-Then when referred to again, “said X”

-Means-plus-function elements: cover any means for performing the function.

*use the word “means” => presumed to be M+F element.

UNLELSS M+F if a specific structure is described in the claim.

-cover only the means disclosed in the specification + equivalents.

-have to ID a means, even if clear to PHOSITA.

-make the entire claim narrowly construed.

-Claim must recite more than a single element. (‘claim for a combination’)

Ex: NO – “widget comprising means for fastening A to B”

Ex: YES – “widget comprising A, B and a means for fastening A to B”

-Can recite two+ elements, both of which are means+function.

Ex: ‘widget comprising means for performing function X and a means for performing function Y’

-Product-by-process claims: interpreted as drawn to the product, but still limited by the process steps. (often for chemical inventions, too hard to describe the chemical itself).

-Improvement claims (Jepson claims): “In X … an improvement comprising Y and Z”

-(Group selection claims) Markush claims: “A comp comprising ABC, where C is selected from the group consisting of X Y Z”

-Random tips

-try drafting multiple levels

-Thing = object; article; apparatus; device; member; medium; mechanism. Means*

-Definiteness (see written description below).

*maybe suggest defensive publishing instead of patent? (though not in my best interests as your atty)

OTHER

*check infringement section for potential issues.

*claims don’t have to enable, obviously.

1) Claim MUST FALL UNDER §101 CATEGORY: *basically ALL inventions are.

“process, machine, manufacture, or composition of matter” or any improvement thereof.

*Broadly defined – “anything under the sun that is made by man” (Chakrabarty).

“Process” = process, art or method. Includes new use of a known process/machine/mfger/comp. (§100)

*narrower by definition – all steps must have been performed in the same order.

“Machine” = generally an article with moving parts. (Chak).

“Composition of matter” = comps of 2+ substances, thru chemical union or mechanical mixture.

“Manufacture” = *(catch all), production of articles, giving these materials new forms, qualities properties or combinations. (Chak).

“or any new and useful improvement thereof”

2) DIRECTED TO A PATENT-INELIGIBLE CONCEPT? (Pt. 1 of Alice test). *basically ALL inventions

-Laws of nature: fundamental facts about the universe (not ‘new’ under §101 – Bilski).

-Products of nature: “natural phenomena”

-Abstract ideas: exists as thought/idea, but not physical or concrete. (not ‘useful’ under §101: Bilski).

FACTORS:

-longstanding human practice(Alice), mathematical formulas (Benson).

-‘building blocks’ of other inventions should be protected. (Purpose of the exclusion).

3) INVENTIVE STEP? (Pt. 2 of Alice test).

The court must find “an element or combination of elements that is sufficient” to ensure that the patent is significantly more than just a patent on the ineligible concept itself. Some application of the concept.

BUT must be careful, lest this exclusionary principle “swallow all of patent law” since everything directed to #2

*Split the elements? DO BOTH (apparently).

-Diehr: look at the claim as a whole.

-Alice: take claim elements separately, is each step is purely conventional. Whole can be > sum.

-FACTORS

-NOT groundbreaking nature of the discovery, or extensive effort.

-Adds more steps, limiting its scope; Something markedly different from what’s in nature.

-broad-sounding language is problematic. (Morse “I do not propose to limit myself”)

-broad claims problematic, more than contribution . (Funk Bros. – [claimed all combos of the material]).

-claiming more than your contribution. (Morse unpatentable, Bell patentable).

-(though it runs together) degree of nonobviousness/usefulness (practical application). (Bilski?).

-type of article/process historically subject to patent protection? (Diehr – industrial).

-Process patent factors

-not just mental steps. (Benson).

-machine or transformation test (‘useful clue’ but not determinative, not sufficient. Bilski).

Process either

-Tied to a particular machine or apparatus

-Or transforms a particular article into a different state or thing

-process limited to specific ends/means suggests patentability.

But can’t avoid bar by adding ‘insignificant post-solution activity’ or ‘limiting to a particular technological environment’ (like a computer) (Diehr; Flook).

-general purpose computer isn’t limiting enough. (Benson –algorithm on comp).

-CASE COMPARISON

-Processes: (Diehr; Alice; Bilski; Telephone cases); Products of nature: (Chakrabarty; Funk Bros; Myriad)

*medical procedures have special rules; Software (arguments go both ways; Benson; Flook; Diehr; Alice;); Biz methods (Bilski) (less likely to get injunctive relief – eBay(Kenn)); Older cases (Telephone cases; Morse).

*OTHER FACTORS

-as technology changes, patent law should as well (Kennedy “information age” - Bilski).

-Statute is broad “dynamic” provision (J.E.M.); unlikely to create new field restrictions in light of Bilski.

-Congressional argument can go either way.

-Up to congress to include tech fields w/in patent protection. (Benson).

-Up to congress to exclude fields from patent protection. (Chakrabarty).

-Fundamental building blocks can go either way

-need to be public so more apps can be found; OR are important, so they should be incentivized.

§101: only for … “useful” sm. And §112: must describe “manner + process of making and using the invention”

*PTO Has initial burden (Swartz)

1) PTO has initial burden of rebutting presumption of utility with evidence that those skilled in the art would ‘reasonably doubt the asserted utility and operability”

=>If so, then burden shifts to applicant to convince those skilled in the art of the asserted utility.

METHODS: PHOSITA knowledge + test/experimental data; expert affidavits, etc.

*Operability: *basically if “inherently unbelievable”: must actually be able to accomplish the utility alleged

-Don’t want to give official recognition to fraud. *Some overlap w/ enablement if doesn’t work.

*Beneficial utility: invention can’t be socially harmful.

-moral issues generally disregarded unless the s/m is illegal in every state and likely to remain so for the foreseeable future. (Juicy Whip – utility was making one product look like another. Deceptive product, but not unpatentable).

*EPO is more willing to adjudicate moral issues though.

-PRACTICAL UTILITY: (two parts)

*LOW BAR: doesn’t have to be economically practical, or work better than what’s already existing.

*if it isnt economically practical, it will “silently sink into contempt and disregard”

“Immediate, well-defined real world benefit to the public” (Fisher).

-At time of priority (filing date, or earlier claimed invention date)

-By PHOSITA standard.

1) Specific utility: asserted use must … show that the claimed invention can be used to provide a well-defined and particular benefit to the public. Not ‘so vague as to be meaningless’ (Fisher).

-specific to the subject matter claimed, different than the broad class.

Fisher: Not specific: the alleged uses don’t set the 5 claimed ESTs apart from the more than 32K ESTs disclosed in the application, or indeed for any EST.

2) Substantial utility: asserted use must show that the claimed invention has “a significant and presently available benefit to the public” (Fisher).

-commercial success may support utility of invention (Fisher dicta).

-“Presently available” – not just subject of ongoing research. (“Patent a hunting license”)

-Brenner (SCOTUS 66): more stringent? “specific benefit in currently available form.”

Rationale: avoid excessive award (blocking off whole areas of scientific development) for small contribution. Avoid...