The claim is the most important aspect
Analogy for introducing a claim is the interstate deed own whatever the deed
says you own, not just a building, but its whatever is in the actual deed
Have to take something you invent, put it in
Patentable subject matter is it the type of thing that is even capable of being
Complies with statutory bars
Diamond v. Chakrabarty
There are three different patents claimed on
Issue can a color be trademarked?
o Yes, if it is used to identify the source
There is no conceptual limit on what can be a mark, it is anything that can identify
Secondary meaning if it develops as a source-identifier to something other
Defenses and Remedies
1. Invalidity and Non-Infringement
a. First line of defense
b. First strategy is to say the patent is invalid (obvious, not new, not enabled,
fails statutory bar, not useful, etc.)
2. Secret Prior Use
a. Used an invention s
o Can file in any federal district court
o State courts are preempted
o Federal circuit has exclusive appellate jurisdiction
Prima Facie Infringement
Ownership of a valid patent
Old Law: Filings Before March 16, 2013:
Under the old law, patents went to the first to invent it
Anticipation did someone else invent it first? is it already in the prior art?
Invention cannot be known or used in this country
The most common way patent applications are rejected
How much inventiveness is enough?
Is the invention obvious to a phosita?
To be not obvious, has to be non-obvious to a phosita at the time of the invention
Has to be more than a trivial
Machine or Transformation Test leading test for figuring out if process patents
are patentable or abstract ideas
o A process patent is patentable if:
It is tied to a particular machine or apparatus, or
It is being used to transform a particular art
Smith v. Dravo
There is no contract, but is there an implied duty?
o If there is, was that duty breached?
Breach of duty
o Explicit Non-disclosure agreement
o Implicit Inferred from circumstances
There was an implied duty
A duty or obligation of confident