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:

The main historical cases:

1850: Hotchkiss v. Greenwood (Hotchkiss v. Greenwood (full text)) Established the "nonobviousness" language the subsequently became codified.
1966: GRAHAM V. JOHN DEERE CO (GRAHAM V. JOHN DEERE CO (full text)) The fundamental inquiries are
- scope and content of the prior art;
- differences between the prior art and the claims at issue;
- level of ordinary skill in the pertinent art; and,
- secondary considerations, including:
  - commercial success of the invention;
  - long-felt but unsolved needs;
  - failure of others to find a solution, etc.
1966: US V. Adams (US v. Adams (full text)) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.