FINAL OUTLINE Patent Law Fa07 - Subject Matter 35 USC 101 -...

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Subject Matter 35 USC 101 - Inventions patentable: Patent must have: utility , novelty (there is not 1 piece of prior art that is equal to that invention) 102 , & un-obviousness (there are not several prior art inventions that add up to the current invention) 103 Reasons to support patents: encourage invention; detailed documentation & 100% disclosure would encourage or bring light to new inventions as well Patent Law Hierarchy- Constitution, 35 USC, 37 CFR Invention must fall w/in a statutory class (process, machine, manufacture, or composition of matter, or any new & useful improvement thereof) MUST BE FIRST TO INVENT, not first to file; FIRST TO INVENT IS ENTITLED TO PATENT Uniform Trade Secrets Act - can’t gain access to someone’s trade secrets through improper means -to make it a trade secret - must make all reasonable efforts to keep it secret, if you do that, you are protected against people using improper means to steal it - Disadvantage: not protected from an independent inventor who stumbles upon the secret – state issue (patent is exclusively federal) Claims : at the end of the app: We claim or I claim or It is claimed once at the top & then the claims, dependant claim (claim that makes reference to an earlier claim), language to reference another claim is: “ the method of claim 1 ”, when you see “ wherein ” it signals that its narrowing the previous claim, dependant claims can overlap, that is not a problem. Transition : “ Comprising ” or “ Consisting of - consisting of : containing exactly these pieces (future inventors w/ these pieces plus x are NOT infringing) - useful in field of chemistry - comprising : containing at least these pieces (so future inventors w/ these pieces plus x are infringing) Term of a patent - begins from the earliest filing date - Power to enforce starts from filing date INFRINGEMENT: X patented using “ comprising A, B, C” - Y invents w/: AB – NOT infringing! ABC- infringing! ABCD - infringing (only b/c of comprising , if used consisting, it wouldn’t be) 35 USC 282 - if your litigating a patent it is presumed valid Climbing the patentability mountain : is it the right subject matter? Is it the right kind of thing to patent? 101, utility, novelty, non- obviousness O'Reilly v. Morse (1854): Infringement action brought by Morse ( burden is on the party asserting invalidity (accused)). Problem is: ENABLING - MUST teach enough to make your invention . Claiming commensurate w/ your full disclosure - NOT about a ban on pure science. Dissent: Must Enable PHOSITA!!! & Morse didn’t do that. He who makes a discovery the servant of man is the kind of person for whom patent law extends its protection. Also, seems like the field was already pretty rich w/ developments, Morse just added a little bit to it Why might we want to reward engineers not physicists? disclosure arg - no way that you could enable phosita to create the scientific principal, scientist are driven to come up w/ science but engineers need the
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This note was uploaded on 02/14/2008 for the course LAW 7574 taught by Professor Staff during the Fall '07 term at Yeshiva.

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FINAL OUTLINE Patent Law Fa07 - Subject Matter 35 USC 101 -...

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