Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010

INTRODUCTION

Outline:

The main purpose for obtaining a patent is economic.
It grants the exclusive right to make, use or sell the invention for a limited period of time.
The governing law is Title 35 of the United States Code (35 USC).
The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
The law is federal, so patent cases are resolved in the federal court system:
- district courts;
- circuit courts;
- the Court of Appeals for the Federal Circuit (CAFC), a special court for patent cases; and,
- the Supreme Court.
The US Patent and Trademark Office (PTO) processes patent applications.
Patents last for 20 years from the date the application is filed with the PTO.
Patents have the attributes of personal property.
The foundation of the federal government's authority to create a patent system is in the constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
Other forms of intellectual property
- copyright;
- trademarks; and,
- trade secrets.

THE PATENT DOCUMENT

Outline:

A patent has several parts:
- specification: describes the invention;
- claims: delineates the ownership rights;
- drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
- other miscellaneous parts.
Interpreting claims: claims are said to read on another device.
The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
The date of the invention
- reduction to practice;
- diligence requirement.
The file wrapper.

Outline:

Outline:

This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
To determine this, there are three fundamental lines of inquiry:
- the scope and content of the prior art;
- the differences between the prior art and claims at issue; and,
- the level of ordinary skill in the art.
Secondary considerations include:
- a long-felt but unsatisfied need met by the invention;
- appreciation by those versed in the art that the need existed;
- substantial attempts to meet this need;
- commercial success of the invention;
- replacement in the industry by the claimed invention;
- acquiescence by the industry;
- teaching away by those skilled in the art;
- unexpectedness of the results; and,
- disbelief or incredulity on the part of industry with respect to the new invention.