IPCharts - Patent Analysis 101 Subject Matter invents or...

Info iconThis preview shows pages 1–2. Sign up to view the full content.

View Full Document Right Arrow Icon
Patent Analysis §101 – Utility Patentable subject matter must be useful -Two factor test: 1. Credible utility – someone skilled in the art would accept that the invention was currently useful for its intended purpose 2. Specific and substantial utility – it has a real world use -High biological activity is not specific -Academic study is not a substantial use ( Brenner v. Manson ) -Pharmaceuticals: generally require demonstration of: reasonable correlation between experiment and theory, structural similarity, and animal testing -Biotechnology (ESTs): connection to actual disease or gene -Social utility – social benefit -Inherently unsuccessful inventions are barred §102 – Novelty A person shall be entitled to a patent unless: (a) 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 – “Novelty” -Was the invention disclosed before the date of invention – prior art -Public use looks at things like: number/ credibility or witness, intent of presenter (secrecy), number of disclosures, amount of enablement in the disclosure - Rosaire v. National Lead – oil patent -Rule 131 practice “swearing behind” (b) 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 US application – “Statutory Bars” -Was the patented subject matter publicly disclosed by the inventor - Egbert v. Lippmann – corset stays -Experimental use exception - City of Elizabeth v. American Nicholson Pavement – pavement test (c) Has abandoned invention (d) Invention was first patented or caused to be patented by the applicant in a foreign country more than 12 months prior to the date of application for patent in this country (e) Invention was described in: (1) An application for patent published under §122(b) by another in the US before the invention date (check issues for foreigners) (2) A patent granted to another in the US before the date of invention (f) He did not invent the subject matter to be patented (g) (1) interference with foreign invention (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. Consider conception, reduction to practice, and reasonable diligence of first to conceive and last to reduce to practice -First to reduce to practice gets the patent unless someone else can show 1) first conception and 2) reasonable diligence §103 – Non-obviousness (a) a patent may not be obtained though the invention is not identically disclosed or described as set forth in §102, 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 of invention to a person having ordinary skill in the art -§102 looks at individual prior art references – do any of them
Background image of page 1

Info iconThis preview has intentionally blurred sections. Sign up to view the full version.

View Full DocumentRight Arrow Icon
Image of page 2
This is the end of the preview. Sign up to access the rest of the document.

Page1 / 6

IPCharts - Patent Analysis 101 Subject Matter invents or...

This preview shows document pages 1 - 2. Sign up to view the full document.

View Full Document Right Arrow Icon
Ask a homework question - tutors are online