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LLM Law Outlines > Intellectual Property (IP) Law Outlines

Patentability Outline

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This is an extract of our Patentability document, which we sell as part of our Intellectual Property (IP) Law Outlines collection written by the top tier of NYU School Of Law students.

The following is a more accessble plain text extract of the PDF sample above, taken from our Intellectual Property (IP) Law Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:

10. Elements of Patentability

MML 233-275; 35 U.S.C. §§ 101, 112

Elements of Patentability

  1. Novelty

  2. Non-obviousness

  3. Utility: specific and substantial

  4. Disclosure: (i) enablement; (ii) written description; (iii) best mode

  5. Subject Matter

3) Utility

  • Statutory Basis for utility requirement

    • § 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…”

    • S. 112(a) [see disclosure]

  1. Operability: Does it do what it claims to do?

    • It works (i.e. Newman and perpetual motion machine)

    • If it does not operate to produce the results claimed by the patent applicant, it is not a ‘useful’

  2. Beneficial Utility: Does it produce some social benefit (or at least no social harm)?

    • Immoral invention: patent denied for inventions that could be used only to defraud

      • Would not use patent law to regulate immoral behaviour

      • Getting a patent is not giving someone’s right to do something, but right to exclude other people form doing that

      • E.g. getting a patent on ban consumer deception doesn’t mean you have the right to do it only a right to stop others form copying their design

      • Illegality is different form immorality: e.g. if the use is illegal, patent would be declined [but people would not apply/ sue on patent that is illegal in some areas, as that would attract unwanted attention]

    • Juicy Whip v. Orange Bang (Fed. Cir. 1999)

      • Facts: Juice dispensing system that only appear to circulate fresh juice, but actually circulate an undrinkable liquid, while the tanks hidden underneath the glass bowl display dispensed the actual justice (inventor claimed this arrangement reduce maintenance costs and avoid contamination)

      • Held: Patentable substantial, operational, beneficial utility

        • No basis in s.101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool the public

        • The fact that one product can be altered to make it look like another, is in itself a specific benefit sufficient to satisfy the statutory requirement of utility, e.g. imitation gold leaf, synthetic fabrics, imitation leather all designed to look like the real thing

        • PTO/ courts are not arbiters of deceptive trade practices beneficial utility is forcing patent officers to do what they are not capable of doing

  3. Practical or Specific Utility: is the utility identified by the inventor a ‘substantial’ and ‘specific’ utility? (Brenner, Fisher)

    • Specific: “provide a well-defined and particular benefit to the public

      • A statement that a composition has an unspecified “biological activity” that may be useful in treating unspecified disorders,

      • A process or a product, which has no known use or is only useful as an object of scientific research is not eligible for patent because it is not "useful."

      • Something that the invention is uniquely specialized to do, rather then something that lots of other things will do equally well –no throwaway or generic uses

      • Federal Circuit does not categorically rule out research tools as patentably useful matter

    • Substantial: show that the claimed invention has a significant and presently available benefit to the public, not that it may prove useful at some future date after further research.

      • Utilities that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use are not substantial utilities.

  • Policy

    • Incentive: if no patent protection, people may be reluctant to create a process

    • Trade secret: companies may protect inventions as trade secrets to hide it form the public if they know they will not get a patent. This will lead to duplicative research.

    • Windfall: Patentee patents something which may cover later useful invention don’t want the patentee to gets the reward

    • Waste resources on PTO that can be better spent on useful patent applications

    • Patent is not a hunting license: granting patent may discourage others to research on downstream development, higher standard of utility forces people to narrow their claims + test of utility will delay patentability, pushing it further downstream

      • Better to leave things in public domain (Fortis).

      • [counter: someone who gets a patent will be incentivized to find a concrete use as soon as possible to make money]

    • Boundary: utility test allows us to know the boundary of the claim (Brenner)

  • Brenner v. Manson (Supreme Court 1966):

    • Facts: Patent Office rejected P’s patent application for failing “to disclose any utility for” the chemical compound produced by the process. P argued that that steroids of a class which included the compound his product produced were undergoing screening for possibly reducing tumors in mice, and that a homologue close to his steroid had proven effective in doing so.

      • November 1956: Ringold and others publish an article revealing that a number of compounds, including the steroid at issue, were being tested for tumor-inhibiting effects. The article also shows that a compound closely related to the relevant steroid was effective in inhibiting tumors.

      • December 17, 1956: Ringold and Rosenkranz file a patent application seeking a patent on the new process for making the known steroid.

      • October 13, 1959: Ringold and Rosenkranz receive a patent on the process.

      • January 1960: Manson files a patent application for the same process

    • Held: Not patentable

      • P did not disclose a sufficient likelihood that the steroid yielded by his process would have similar tumor-inhibiting characteristics

      • Patentee didn’t find the use of the steroid if later someone else find a use of the steroid (but nth to do with inhibiting a tumor) patentee would get a windfall

      • If patent claim is not relevant to its use it would cover all its uses

        • “Until the process claim has been reduced to production of a product shown to be useful the metes and bounds of that monopoly are not capable of precise delineation" If you don’t have a use, no clear boundary of the claim

        • Prof: but utility doesn’t determine the boundary of a claim, court is worried patentee would get a windfall/bonus from what they did not do

      • Patent is not a hunting license: only patent license when you successfully complete the hunt - it is not a reward for the research, but compensation for its successful conclusion

        • Could file a patent application, but if you are not there yet, keep working

        • Not that it cannot get a patent, but it is not ready yet but waiting is worrying for them as others would get there before them/ steal their idea

        • Duplicate research without disclosure

      • Research tools are likely to have utility concerns, as they are used to generate other things would prohibit downstream research

        • Counter: need to encourage others to invent such research tools

    • Brenner applied for patent then Manson later applied. Two competing claims on the same process, PTO decide whether it is patentable and who should get the patent

      • Manson tries to freeride the previous

      • Narrow definition of useful: frivolous and in-significant

      • Broad definition of useful: not positively harmful to society rejected

      • A process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute

    • Dissent:

      • Reject the narrow definition of ‘useful’

      • To encourage one chemist/ research facility to invent and disseminate new processes and products may be vital to progress, although the product or process be without ‘utility’ as the Court defines the term, because the discovery permits someone else to take a further but perhaps less difficult step leading to a commercially useful item

    • Cases following Brenner state that a claimed invention must have a specific and substantial utility that is credible Substantial utility standard requires proof that an invention:

      • serves some practical purpose

      • not generally promising/ promising enough to pursue further

      • presently available benefit to the public

  • What counts as useful?

    • [No] Project initiation: pure concept stage

    • [No] Promising experimental results: Brenner v Manson

      • [despite decent chance if it proceeds to clinical result]


  • [Yes] Promising Clinical Results, e.g. in virtro – in re Brana

    • In virtro = (of a process) performed or taking place in a test tube, culture dish, or elsewhere outside a living organism.

  • [Yes] Working model or prototype; in vivo effectiveness

    • In vivo = (of a process) performed or taking place in a living organism.

  • Different treatment between experimental results and clinical result

    • Certain things are so important that we cannot over protect them worry that it would affect downstream research

    • Following innovation of an invention may goes into different fields

  • In re Fisher (US Court of Appeals Federal Circuit) (2005)

    • Facts: P applied patent for an EST (Expressed sequence tag) relating to 5 purified nucleic acid sequences that encode proteins and protein fragments in maize plants. P did not know the precise structure or function of the gene and protein encoded for, P argue there are 7 uses.

      • Cannot predict what protein this EST would make, cannot use it to treat disease, don’t know enough about what this sequence does but there are other uses: e.g. molecular marker Whether enough for utility?

    • Held: Not patentable, utility must be specific and substantial

      • Specific utility

        • P’s alleged uses are so general as to be meaningless - applicable to every EST gov asserts that the same generic uses could apply not only to the five claimed ESTs but also to any EST derived from any organism.

        • Any specific utility would be substantial (except for throwaway utility)

          • E.g. putting red spider into a bag with chemical and see if the chemical kills the spider

      • Substantial utility [0: 40]

        • P admits that the underlying genes have no known functions

        • Claimed ESTs are objects of use-testing: objects upon which scientific research could be performed with no assurance that anything useful will be discovered in the end

        • Prof: why did the court not address whether it is marketable (if there is a market, it is useful)

          • wanted to be further developed/ not to cut off downstream innovation

          • since utility is measured at the moment of patent application difficult to know the marketability at the time of application (would not be on the market yet)

      • Claimed ESTs themselves are not an end of Fisher’s research effort, but only tools to be used along the way in the search for a practical utility

        • ESTs are useful, but patenting it may lock up things far more useful but not discovered yet court concern about downstream research

        • Counter: people would hide their research from others duplicate researches – only one get patent

  • Utility

    • Operability: Does it do what it claims to do?

    • Beneficial Utility: Does it produce some social benefit (or at least no social harm)?

    • Practical or Specific Utility: Is the utility identified by the inventor a ‘substantial’ and ‘specific’ utility?

  • What counts as utility

    • A reasonable correlation between the evidence and the asserted utility is sufficient

    • Data from in vitro or animal testing is generally sufficient to support therapeutic utility. Office personnel should not impose on applicants the unnecessary burden of providing evidence from human clinical trials.

  • What does not count as utility

    • Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved.

    • A method of treating an unspecified disease or condition.

    • A method of assaying for or identifying a material that itself has no “specific and/or substantial utility”

    • A method of making a material that itself has no specific, substantial and credible utility.

    • A claim to an intermediate product for use in making a product that has no utility.

    • No throwaway/ generic utilities

4) Disclosure P.247

  • Inherent Tension of Disclosure:

    • Restricting patentee’s right to that which the patentee actually invented permitting competitors to invent around the patentee’s invention

    • In exchange for gov grant, inventor must disclose the workings of the invention in enough detail to be informative to other people working in the same field

    • Sufficiency of the patentee’s disclosure and its relationship to the claims of a patent

  • Purpose

    1. Injects info into public domain to be used after patent expires

    2. Disclose after 18 months of patent filing (before patent expires)

      • Inject info right away allow competitors to

        • invent around a patent (another way to do the same thing)

        • stimulate further innovation (blocking patents)

          • E.g. chair rocking chair: patentee of rocking chair cannot make use without permission of patentee of chair; and patentee of chair cannot make rocking chair without patentee of rocking chair’s permission need to license

        • inspire other inventions in other areas

          • e.g. nylon led to development of synthetic materials

    3. Public to know boundary of the patent

    4. Reduce duplicate effort/ wasting resources

    5. Prevent others from keeping the invention secret, as economic growth is caused by companies’ disclosures

      • Companies would need to license info from each other, difficult ad for newcomers (who have nothing to bargain against)

  • Example of disclosure

    • Cheese slicer specification’s claim elements

      • Rotating handle at end of bar

      • Cutting element attached to bar

      • Base, with passageway

      • U-shaped bar

  • Contemporary patent disclosure requirements s.112

    • § 112(a) “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 or joint inventor of carrying out the invention.”

    • (b)-(f) deal with how patents are claimed (and not adequacy of disclosure)

    • 3 requirements on disclosure:

      1. Written description (of the invention)

      2. Enablement (enable any person skilled in the art to make and use the same)

      3. Best mode (of carrying out the invention)

    • Example for baking a cake

      1. Written description type of cake Black Forest

      2. Enablement recipe/ ingredients Step 1, 2, 3

      3. Best mode preferred oven temperature 350F

1) Enablement

  • In re Wands (1988) P.263 Undue Experimentation Standards

    • Facts: Patent was refused by PTO applicant appeal

      • Only 4 out of 143 (2.8%) hybridomas wereprovedto fall within the claims low rate of demonstrated success suggest appellants' methods were not predictable/ reproducible

    • Held:

      • Enablement is tested by asking whether the person having ordinary skill in the art would be able to make and use all the species covered by the patent without ‘undue experimentation’

      • Someone skilled in the art (not just anyone) would not be able to produce these antibodies with any degree of certainty a person skilled in the art would have to engage in undue experiment to make antibodies in the claim

      • Patentee need not disclose so much info so others gets the result after a few times of experiment but not undue experiment/ shouldn’t be too hard to do so

      • If need to do a lot of test to produce the antibody applicant could only produce a small fraction no enablement

    • How much information do patentee has to give:

      • (1) quantity of experimentation necessary

        • The more other people has to do, the less likely it was enabled

      • (2) amount of direction or guidance presented

      • (3) presence or absence of working examples

        • Claim is invalid if there is a significant no. of inoperative combination, forcing one of ordinary skill in the art to experiment unduly to practice the claimed invention

      • (4) nature of invention

      • (5) state of the prior art

      • (6) relative skill of those in the art

        • Difficult + time-consuming experiment doesn’t necessarily mean it is undue

      • (7) predictability or unpredictability of the art

        • If an invention pertains to an art where the results are predictable a broad claim can be enabled by disclosure of a single embodiment. Spectra-Physics Inc v Coherent Inc

      • (8) breadth of the claims

        • the broader the claims are, the more suspicious (Fisher)

  • O’Reilly v Morse (Supreme Court 1853) Telegraph

    • Ways in which the patentees draft patent claims to maximise patent scope and the balance underlying patent law’s disclosure requirements

    • Facts: Morse invented an instrument for an electro-magnetic telegraph, arranged and noted down a system of signs composed of a combination of dots and spaces which were to represent figures, and these were to indicate words to be found in a telegraphic dictionary.

    • Morse made 8 claims: invention and improvement of

      • (1) [Patentable] making use of the motive power of magnetism as means of operating or giving motion to machinery, which may be used to import signals upon paper/ other suitable material or to produce sound…

      • (3) [Patentable] the combination of machinery… constituting one apparatus of telegraphic machinery…

      • (5) [Patentable] the system of signs, consisting of dots, spaces… substantially illustrated for telegraphic purposes…

      • (8) [Not patentable] Morse claimed to be the first inventor to “the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, letters or signs, at any distances, being a new application of that power.”

    • Held: Claim (8) is not patentable – it is too broad comparing to what Morse actually did

      • Morse did not confine his claim to the machinery or parts of machinery which he specifies, but claims a monopoly in its use

      • It is possible that some future inventor may discover a mode of writing/ printing at a distance by means of the electric/ galvanic current, without using any part of the process/ combination set forth in P’s specification

      • if the later patent is covered by this patent, the inventor cannot use it, nor the public have the benefit of it, without permission of this patentee

    • Neilson v Harford (1829) (English case)

      • Neilson described his invention as for the improved application of air to produce heat in fires, forges, and furnaces where a blowing apparatus is required

      • Description was too general: patent for throwing hot air into furnace instead of cold, and thereby increasing the intensity of the heat = patent for a principle not patentable

    • Under modern enablement law

      • Morse could argue that the enablement determination proceeds as of the effective filing date of the patent’ hence his (8) claim is valid based on the primitive state of electromagnetism technology when he filed his application

      • But, the vast breadth of claim (8) + most uses of electromagnetism would not work for the claim’s intended purpose (communication at a distance) without the limitations of the more specific claims

  • The Incandescent Lamp Patent (1895) (Supreme Court) P.257

    • Facts: Sawyer and Man had a patent on an electric lamp and claimed ‘all carbonized or fibrous or textile material’ as filament BUT not every type of fibrous material works, and specification reads as if any fibrous material would work did not work so well. Thomas Edison conducts a search of 6,000 types of fiber finds that one type of carbonized bamboo that works best as filament. If Sawyer and Mans’ patent ‘carbonized fibrous material’ is valid, it would cover what Edison’s ‘carbonized bamboo’, making Edison an infringer. At time of suite, Edison’s lamp was doing the best in the industry.

    • Held: not patentable for lack of enablement.

    • Patent is void if the description is so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device; too indefinite to be the subject of a valid monopoly

    • P’s experiment with carbonized paper and wood carbon (which belong to the fibrous kingdom) did not give them sovereignty over the entire kingdom just because they tried a type of fibrous material doesn’t mean they enabled all fibrous material cannot limit other experimenters

    • P claim they discovered the best material for an incandescent conductor, but made an overly broad claim for every fibrous/ textile material, instead confining to a material that actually work well But not all fibrous material worked

    • Edison (D) tested on 6000 types of fibrous material did undue experiments to find a fibrous material that did work well: he isolated the precise type of bamboo that would work + tried to lock up as many acres of production of the bamboo as he could

    • Edison found that a good filament requires a thin, straight thread; and not a fibrous material P cannot enable though Edison’s calls within P’s patent Claim, their claim was invalid

    • Policy: this discourage innovation rather than promote it cannot claim beyond what they did, allowing P to claim too broad in relation to what they did, would be over-rewarding for their work. Court want to encourage people to experiment more to find out what exactly work

    • Patent applicants claim broadly because they are worried that someone would find another way to do it

  • When there is a low success rate for producing something, should

    • Establish that it is an unpredictable area of science

    • Have inventor test more of the antibodies and increase amount of disclosure so as to render what is an unpredictable field more predictable

    • Deposits: we realize that it will only work 1/10th of time but will deposit the successful time and anyone who wants can have access


  • Utility

    • Inventions must be “useful” to be patentable. (§§ 101, 112 ¶ 1)

    • An invention must be operable, by doing what it claims to do (i.e., it must be “useful” for its specified purpose).

    • Utility must be specific and substantial (Brenner, Fisher).

    • Research tools are patentable if there is a practical utility (Fisher).

    • Beneficial utility has been rejected (Juicy Whip).

  • Disclosure

    • Disclosure helps stimulate innovation (and economic growth) in many ways (e.g., use of all information after the patent’s expiration; use of information before and after the patent term to invent around, build on, or be inspired by the invention).

    • Enablement

      • Enablement means giving the PHOSITA enough information to practice the invention without undue experimentation (Wands).

    • Enablement in the specification defines the scope of what the patent applicant can claim (Morse; Incandescent Lamp)

2) Written description P.267

  • § 112. Specification

    • (a) … 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 ….

  • § 120. Benefit of earlier filing date in the United States

    • An application for patent for an invention disclosed in the manner provided by section 112(a) … in an application previously filed in the United States … shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application ….

  • § 132. Notice of rejection; reexamination

    • (a) … No amendment shall introduce new matter into the disclosure of the invention.

  • S.112 Applicant must show the inventor was in possession of the invention claimed, at time the patent was filed

  • This doctrine prevents applicants from claiming subject matter they were not themselves yet aware of, even if skilled artisans could have gleaned it from the patent specification

  • Court recently used ‘written description’ to test for claim overbreadth, in a manner similar to classic enablement test

  • Claim previously only refers back to description now need to list out what is being claimed in the Claim

  • The Gentry Gallery, Inc v The Berkline Corp (Fed. Cir. 1998) US Court of Appeal

    • Facts: Gentry allege Berkline infringed its patent on a sectional sofa with 2 independent recliners facing the same direction (c.f. typically facing different directions).

      • P’s invention placed a console between 2 recliners, the console accommodates the controls for both reclining seats, thus eliminating the need to position each recliner at an exposed end of a liner section. [0:22]

      • Claim 1 “a selection sofa comprising… a fixed consolea pair of control means, one for each reclining seat, mounted on the double reclining seat sofa section.”

        • Patentee amended he claimed so that the controls are not necessary be on the console as he saw competitors making putting controls not on the console ‘mounted [anywhere, not just the console] on the sofa section’ too broad

      • D’s sofas’ recliners were separated by a seat which the seat back may serve as a table top between the recliners, had no ‘fixed console’ + controls are on not on the console.

    • What is Claimable? [PPT]

      • Original Description: claimable by original inventor

      • Taught by Patent but dedicated to the Public cannot be claimed by original inventor

    • Why not allow patentee to claim the rest?

      • The way the description is written shows that the inventor did not imagined that the controls can be anywhere else than the console claim is so broad that it includes the control is put in any where else on the couch

    • Held: a claim need not be limited to a preferred embodiment, however, cope of right to exclude may be limited by a narrow disclosure.

      • Here, the original disclosure clearly identifies the console as the only possible location for the controls no variation is suggested

      • disclosure is limited to sofas in which the recliner control is located on the console

      • locating the controls anywhere but on the console is outside the stated purpose of the invention [+ Patentee admitted that he did not consider placing the controls outside the console]

      • In re Rasmussen claim may be broader than the specific embodiment disclosed in a specification however, an applicant is entitled to claims as broad as the prior art and his disclosure will allow here, one skilled in the art would clearly understand that the controls has to be on the console – it is essential to the invention

  • Court concern that it would be difficult to administer

  • Ariad Pharmaceuticals, Inc. v. Eli Lily & Co (Fed. Cir. 2010)

    • 3 types of molecule that can induce NF-kB-mediated intracellular signaling

    • Method of Claim 9, carried out on human cells

    • Written description requirements of s.112(a) is separated and apart from enablement

      • 112 Specification

        • (a) “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…”

        • This version suggests that s112 contains 2 distinct requirements: a written description; and an enablement requirement

        • OR

        • (a) 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 mostly nearly connected, to make and use the same…

        • This parsing of the language suggests that the sufficiency of the written description requirement is tested by whether the person skilled in the art can make and use the invention (i.e., it is viewed as part of the enablement requirement).… [0:40]

    • In possession of the invention

      • Whether written description satisfy depends on the facts

      • Hypothesis of 3 possible cells are not enough here (though might be sufficient in more complicated areas) should work harder to get a broader patent

      • Must precisely delineate your invention to show you are in possession of the invention

    • Specification must clearly demonstrate to a person having ordinary skill in the art (PHOSITA) that the inventor possessed what is claimed as of the filing date

    • Question of fact depends on the context:

      1. nature and scope of claim;

      2. complexity and predictability of relevant technology

      3. extent and content of the prior art

      4. maturity of the science or technology

    • Here, the disclosure was more in the nature of a research plan not actually produced ay of those molecules at the time it filed its patent application

    • Though its estimations were ultimately given court ruled Ariad was not adequately in possession of the necessary knowledge at the time they file their application [key figure not disclosed until 2 years after application)

    • Vague functional description and invitation for further research does NOT constitute written description of specific molecule

  • Comparing to the Enablement Requirement

    • Written description doctrine is more restrictive than the enablement requirements

      • Claim may meet the enablement test, but fail the written description test

      • But if a claim meet written description test, it would meet the enablement test

      • Specification need not explicitly teach those in the art to make and use the invention

      • Requirement satisfied if specification teaches those in the art enough that they can make and use the invention without undue experiment

    • Written description is a separated test

Summary: Written Description

  • Policy: Demonstrate that the applicant is in possession of the invention at the time of filing (Gentry Gallery, Ariad)

  • Different requirement than enablement (Ariad)

  • One can’t rewrite claims during prosecution to capture new technologies, or track competitors’ products unless the new material is already in the specification. (Gentry Gallery)

  • With regard to biotechnology, you must precisely delineate what you have invented (structure, formula, chemical name, …). (Ariad)

3) Best Mode P.273

  • 35 U.S.C. § 112(a): “The specification … shall set forth the best mode contemplated by the inventor or joint inventor of carrying out his invention.”

  • Whether included enough info to enable your specific preferred embodiment – disclose your best way of doing it shouldn’t get reward to the patent and keep the best way

  • But difficult to find out if it is the best mode; and others may not realise you did not disclose the best way of doing it in lawsuits generated expensive discovery, unpredictable, complex judgement

  • Established as a safeguard against incomplete disclosure of the most effective ways of practicing the invention Prevent inventors to hold back their preferred method or embodiment from their disclosure In re Nelson (1960)

  • BUT: failure to disclose best mode is not a basis for invalidating a patent claim, it remains theoretically applicable in patent examination

Claim Indefiniteness P. 359

  • Nautilus, Inc v Biosig Instruments, Inc. (Supreme Court) (2014)

    • S.112(b) a patent specification should “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention”

    • Facts: Patentee (Biosig)’s patent on an improvement on the heart-rate monitor for use during exercise, by eliminating inaccuracy in measuring the electrical signals accompanying each heartbeat. Biosig alleged that Nautilus sold Biosig’s patent technology without license. Biosig brought patent infringement suit against Nautilus Nautilus asked PTO to reexamine Biosig’s patent.

    • The original patent claim includes:

      1. Elongate member with a display device

      2. Electronic circuitry including a difference amplifier

      3. Live electrode on each half of the cylindrical bar

      4. Common electrode mounted in spaced relationship with each other

      5. Four additional elements

    • Nautilus argue: as long as it is ambiguous it is lacking definiteness [strict standard]

      • ‘spaced relationship’ is indefinite, there are different ways of doing it

    • Biosig argue: patent should provide reasonable notice (lower standard, easier to reach)

    • Court Need not be so precise to the point that there are no other possible ways of doing it

    • Held - Test for indefiniteness: A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, failed to inform, with reasonable certainty, those skilled in the art about the scope of the invention, at the time the patent is filed

    • Does patent withstand definiteness scrutiny under s.112(b):

      1. Definiteness is to be evaluated from the perspective of someone skilled in the relevant art

      2. Claims are to be read in light of the patent’s specification and prosecution history

      3. Definiteness is measured form the viewpoint of a person skilled in the art at the time the patent is filed

    • What is the Court concerned about?

      • Patent must be precise enough to afford clear notice of what is claimed must be particular as to distinguish the invention/ discover from other things before known and used

      • Definiteness requirement mandates clarity, while recognizing that absolute precision is unattainable - Reasonable certainty (with regard to their subject matter), but not absolute certainty

    • Circuit court’s ‘amenable to construction’ and not ‘insolubly ambiguous’ is lower than s.112’s requirement would diminish the definiteness requirements’ public-notice function + foster the innovation discouraging “zone of uncertainty”

Summary: Claim definiteness:

  • A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. (Nautilus)

11,12. Elements of Patentability: Novelty and Statutory Bars

MML 168-206; 35 U.S.C. §§ 102 (pre-AIA), 112

Elements of Patentability

  1. Novelty

  2. Non-obviousness

  3. Utility: specific and substantial

  4. Disclosure: (i) enablement; (ii) written description; (iii) best mode

  5. Subject Matter


2 regimes of Novelty

  1. 1952 Regime governs patent applications filed prior to March 16, 2013

  2. Simpler AIA novelty regime, governs all patent filed since March 16, 2013

(1) 1952 Regime: 35 U.S.C. 102 (pre‑AIA)

  • 102 Conditions for patentability; novelty and loss of right to patent.

    • “A person shall be entitled to a patent unless:

      • Burden on defeating patentability on PTO PTO must establish one of the conditions of patentability in rejecting a patent application

    • (a) [Novelty] 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) [Statutory Bar] 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) [Abandonment] [the inventor] has abandoned the invention, or

    • (d) [Late filing in the US] the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country 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

    • (e) [Secret Prior Art: Previously-filed applications] 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, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

    • (f) [Derivation] he did not himself invent the subject matter sought to be patented, or

    • (g) [First-to-invent]

      • (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.

  • S.102 2 subsets of requirements for a patent to issue:

    • (1) Novelty [(a)(e)(f)(g)]

      • (a) First to Invent

      • Ensure patent issues only to the first inventor, invention is novel

      • Prior art, publicly known techniques, marketed products, containing all elements of the claimed invention ill anticipate and defeat the patent claim

    • (2) Statutory Bar [(b)(c)(d)]

      • (b) Timing Filing (on year grace period)

      • Application filed in a timely manner (within a year) hence not subject to statutory bar

      • Fail to file in time barred from receiving a patent (loss of right)

Nature of Novelty

  • 102(a) “A person shall be entitled to a patent unless 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”

  • What info can you consider from before the person invented it? Should you consider everything out there or only some of them?

  • Anticipation: What does it mean for a reference to anticipate an invention?

    • E.g. Cheese slicer’s 4 elements: Rotating handle at end of bar, Cutting element attached to bar, U-shaped bar, Base, with passageway

      • Prior Art reference the reference contains all the claimed elements the prior art anticipated the invention destroying the subsequent invention’s novelty

      • If prior art contains 3 out of 4 elements not anticipated

    • A single species may anticipate genus claim (claiming entire category, e.g. all fibrous material in prior art subsequent claiming only one fibrous material)

      • Prior art reference patent claim

      • If one or more claimed embodiments are disclosed, then no novelty exists

  • Why have novelty requirement?

    • Don’t want to give people reward for things already out there

    • Used by others in this country (not foreign country) easier to prove (foreign country only for printed publication)

  • Rosaire v National Lead Co (US CA 5th Cir.) (1955) P.171 [March 1]

    • Facts: Rosaire (P) and Horvitz patents relate to methods of prospecting for oil or other hydrocarbons (whether worth drilling for oil) P claimed and was issued patent in 1936. But Teplitz-Gulf knew and extensively used in the field the same alleged invention in 1935-36, before any date asserted by Rosaire and Horviz. (But Teplitz did not apply for patent until 1939, did not publish his ideas, nor give public the benefit of the experimental work)

    • Held: Rosaire’s patent invalid Teplitz work was a successful and adequate field trial of the prospecting method involved and a reduction to practice of that method though no public knowledge can still invalidate a subsequent patent Rosaire patents were invalid

    • P argued: society did not have the have benefit of the knowledge that Gulf was using, as it was not patented/ published

      • Court rejected: used in public + normal course of employee even though discontinued to use + did not bring to the public counts as ‘known or used by others’ under 102(a) (any use without concealment would count – whether or not society benefits

      • Prof: implies policy incentive to look at what others are doing

      • Fewer patented work and easier to search (c.f. court don’t want to burden the public to search over copyrighted work) court want people to look and see if the invention is already patented

        • If people performed due diligence to looked and couldn’t find it novel

        • But if someone tries to hide it not novel

        • Rationale: don’t want to disappoint reasonable expectation of the public/ competitors if they did due diligence would deserve a patent

      • Prior work is nonpublic/ experimental/ secretive

        • New Railhead v Vermeer (dissenting judgment): the use took place under public land, hidden from view, no showing that the use was anything but confidential… to understand the method of using the drill… was impossible to do so”

        • Woodland trust v Flowertree Nursery Invalidate of the patent owned by Woodland based on prior knowledge and use of a nursery watering system identical to that claimed to the patent Fed Cir held P failed to satisfy the heavy burden in establishing prior public knowledge and use based on long-past events without physical records

      • For a disclosure to be ‘public’ different standards argued

        • Known/ use that an ordinary skilled worker exercising reasonable diligence to learn the state of the art would have discovered, recognised and been able to construct the invention

        • Hall v MAcNeale use of the hidden feature in the safes were necessarily known to the workmen who put them in

        1. Relative novelty: everyone knows about it – as long as not secret, it counts, requires publicness

        2. Absolute novelty: doesn’t exist anywhere, if it does not novel

    • P argued: just experimenting, shouldn’t count

      • Court rejected: Gulf’s work was a successful and adequate field trial of the prospecting method involving and a reduction to practice of that method

        • Teplitz work was not prior art because it was incomplete, a mere ‘abandoned experiment’?

        • Picard v United Aircraft Corp (2nd Cir 1942) perfected, withstood a severer test than was necessary in use, been sold, remained permanently accessible to the art, contribution to the sum of knowledge

      • Nowadays – was the prior art reference enabled or capable of teaching one skilled in the art its details

    • Patent: whether or not we have it [c.f. copyright: encourage people to create on their own]

Inherency doctrine

  • A claim is anticipated if each element of the claim is found, either expressly or inherently, in a single prior art reference.

    • Even if the prior art was used for a different purpose, in a different setting, or without recognition of valuable properties

    1. If someone discloses or makes the claimed invention accidentally, ask whether society got the benefit of the invention (Knowledge? Access?) (Tilghman v. Proctor).

    2. If someone discloses or makes the claimed invention but the invention is inaccessible or undetectable: no effective access, so no inherency/anticipation (In re Seaborg).

    3. If someone discloses or makes the claimed invention but the invention is unwitting but inevitable, there is inherent anticipation (Schering Corp. v. General Pharms., Inc.)

  • Natural byproduct or unintended invention

  • Accidental producer unaware of the product and did not attempt to produce it later an inventor intentionally makes the product, the prior unintended production of the product may or may not be raised as prior art

  • Tilghman v Proctor not anticipated no inherency not prior art

  • Abbott Labs v Geneva Pharmaceuticals product was appreciated and sold, despite did not appreciate qualities of product

  • Newer Fed. Cir. cases focused on whether an invention was present in the prior art in a way that provided a public benefit

Summary: Novelty and Statutory Bars

  • Policy: encourage early invention, rewards people for contributions that society doesn’t already have

  • Statutory bars erect a barrier to patentability of certain disclosures that occur more than 1 year before the filing of a patent application (§ 102(b))

    • Encourages prompt disclosure and filing

    • Disclosures can be by anyone, including the inventor, and can occur after invention to be “known or used by others,” the matter must be reasonably accessible to the public and not secret (Rosaire).

    • In run-of-the-mill cases, “known or used by others” = publicly known and used by others.

  • A § 102 “printed publication” must be

    1. Sufficiently accessible to the public interested in the art,

    2. Not secret, and

    3. Tangible and preservable (Hall)

  • Inherency doctrine = Sometimes a reference can anticipate even though it doesn’t talk about all the elements, if it nevertheless includes them.

Statutory Bars

  • 102(b) bars granting of a patent where “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 US”

    • Inventor barred by her own actions

      • c.f. novelty – inventor cannot destroy novelty of her own invention

    • Inventor has one-year grace period for filing a patent following patenting, printing publication, public, or public use in the US

    • Requirement of prompt filing aims to preventing inventor from commercialism without starting the clock running

    • Allow others to know if when they can make it – so public would not think that any invention is freely available, prompt disclosure

    • But give one year grace period to give people reasonable time to file so patent will start and end earlier, but not too quickly

      • C.f. European doesn’t give grace period – need to file before publishing and sold

  • In re Hall (US CA for Fed.) (1986) P.178

    • Facts: appeal from PTO’s Board of Appeals based on ‘printed publication’ bar under 102(b). P’s doctoral thesis was printed more than one year prior to the application’s effective filing date.

    • Issue: whether the thesis is available as such a printed publication

    • Held: affirmed PTO’s decision – P’s thesis was available (accessible) prior to Feb 27, 1978, by general user’s cataloged and placed in the main collection of the library dissertation was available for general use towards the end of Dec 1977 sufficient to conclude the dissertation had an effective date as prior art more than one year prior to the filing date of the appellant’s initial application.

      • P argued: 102(b) requires publication to be accessible to the interested pubic, but

        • (1) no evidence that dissertation was properly indexed in the library catalog prior to the critical date; and

          • Court: Evidence of routine business practice is enough

          • Printed publication bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone Need not show specific date of cataloging and shelving

        • (2) even so, single cataloged thesis in one uni library doesn’t constitute sufficient accessibility of the publication’s teaching to those interested in the art exercising reasonable diligence

          • Even only one it counts

          • Printed = assumed it went to other people (previously more so, nowadays may not been shown to anyone even if printed)

          • Indexed by subject matter easy to search accessible to public

          • [but if thesis is indexed by author difficult to search not accessible to public]

    • Note: could also arise under 102(a), if the publication had occurred before the invention of the subject matter by P

      • [102(b) applies as the publication occurred more than one year before the applicant filed for a patent]

    • In re Klopfenstein temporary display of scientific research info at conference constituted publication under 102(b), court decided on balancing factors:

      1. Length of time the display was exhibited

      2. Expertise of the target audience

      3. Existence (or lack) of reasonable expectations that the material displayed would not be copied

      4. Simplicity/ ease with which the material displayed could have been copied

  • Algol Co. sent progress letter to everyone in the field in 1969, then filed for patent in 1971 held not public as there were restrictions to disclosures (despite everyone should know, know about it)

  • But: the cost of searching may be higher than the cost of reinventing law should encourage reinvention and not search

Public Use

  • Egbert v Lippmann (Supreme Court) (1831) P.182

    • Facts: P alleged D infringed his patented invention for an improvement in corset-springs. D claimed public use defense: patent invalid if invention which they cover was in public use, with the consent and allowance of the inventor, for more than two (now only one) prior to his application.

      • January-May 1855: Samuel Barnes gives his friend, Frances Lee, a pair of corset steels constructed with corset springs that he has invented. For years, she wears both this pair and a second pair received from Barnes in 1858.

      • 1863: Barnes shows his invention to one Sturgis.

      • 1866: Barnes applies for a patent on his improved corset springs. Barnes receives a patent based on this application.

      • 1873: The patent is reissued to Frances Lee Barnes [later Egbert]

    • Held: What constitute public use? Single use suffice if no imposition of secrecy

      • (1) one well-defined case of use is just as effectual to annul the patent as many (need not be used by more than one, though more use would strengthen the proof)

      • (2) Public use if the inventor gives or sells it to another to be used without limitation or restriction, or inunction of secrecy, and it is so used

      • (3) Some inventions are by nature only capable of being used where they cannot be seen or observed by the public eye. It is public use if the inventor sells a machine of which his invention forms a part, and allows it to be used without restriction

    • Majority: Public use here, P resented to D for use, imposed no...

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