Patent-Law-Dreyfuss-Fall06

Patent-Law-Dreyfuss- - Patents I Dreyfuss Fall 2006 U.S Const Art I 8 cl 8 Patents and Copyrights Clause[Congress shall have Power To promote the

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U.S. Const. Art. I § 8, cl. 8. Patents and Copyrights Clause [Congress shall have Power] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries Alternatives to a patent system Govt subsidies univ get rights to invention, but govt has march-in rights (Bayle-Dole Act) Extreme compulsory licensing govt buys all ideas and give to public Trade secrets not very transferable Trade industry self-rule potential antitrust violations First-mover works for invention that requires lots of time & energy; buy all raw materials up Trademark invest in goodwill and rely on loyalty customer group For an invention to be patentable, it must be of patentable subject matter, have utility, be new, and nonobvious. Before an inventor can obtain a patent for a patentable invention, he or she must be an original inventor, avoid the statutory time bars, adequately disclose the invention, and distinctly claim the invention. I NITIAL BURDEN RESTS WITH THE EXAMINER TO ESTABLISH REASON FOR DENIAL OF PATENT PROTECTION . Claim Drafting Inventor will want to construct both broad and narrow claims in a single application. Broader independent claims o Risk invalidation by courts o BUT cannot claim anything beyond the actual discoveries of the inventor Narrower dependent claims o Make it easy for other inventors to draft around o BUT may have to in order to avoid prior art Transition phrases “Comprising of” – Inventions that include elements A, B, and C and any additional elements “Consisting of” – Inventions that include only elements A, B, and C “Consisting essentially of” – A, B, and C and any non-essential elements Means-Plus-Function Elements (§112) “means for doing X” Jepson Claims “wherein the improvement comprises” Continuation v. Continuation-in-part application: §120 Continuation same disclosure as the prior application o Benefits in priority b/c it gets the same filing date as the prior application o Useful if the inventor wants to restructure the claim or make changes to the claim in order to address reasons for rejection of the application by the PTO. Continuation-in-part different disclosure from the prior application o Useful if the inventor discovers an improvement and desires a patent claim to match o Only claims that are explicitly or inherently supported by the disclosure of the prior application get the benefit of the earlier filing date, whereas claims supported by the added material in the disclosure get the filing date of the continuation-in-part. 1
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This note was uploaded on 04/04/2008 for the course LAW ALL taught by Professor Multiple during the Fall '06 term at NYU.

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Patent-Law-Dreyfuss- - Patents I Dreyfuss Fall 2006 U.S Const Art I 8 cl 8 Patents and Copyrights Clause[Congress shall have Power To promote the

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