QUESTIONS & ANSWERS: Patent Law

Transcription

1 QUESTIONS & ANSWERS: Patent Law

2 LexisNexis Law School Publishing Advisory Board Charles B. Craver Freda H. Alverson Professor of Law The George Washington University Law School Richard D. Freer Robert Howell Hall Professor of Law Emory University School of Law Craig Joyce Andrews Kurth Professor of Law & Co-Director, Institute for Intellectual Property and Information Law University of Houston Law Center Ellen S. Podgor Professor of Law & Associate Dean of Faculty Development and Distance Education Stetson University College of Law Paul F. Rothstein Professor of Law Georgetown University Law Center Robin Wellford Slocum Professor of Law & Director, Legal Research and Writing Program Chapman University School of Law Charles J. Tabb Alice Curtis Campbell Professor of Law University of Illinois College of Law Judith Welch Wegner Professor of Law University of North Carolina School of Law

3 QUESTIONS & ANSWERS: Patent Law Multiple Choice and Short Answer Questions and Answers By Cynthia M. Ho Clifford E. Vickrey Research Professor Director, Intellectual Property & Technology Program Loyola University Chicago School of Law

4 ISBN#: This publication is designed to provide accurate and authoritative information in regard to the subject matter covered. It is sold with the understanding that the publisher is not engaged in rendering legal, accounting, or other professional services. If legal advice or other expert assistance is required, the services of a competent professional should be sought. LexisNexis and the Knowledge Burst logo are trademarks of Reed Elsevier Properties Inc, used under license. Matthew Bender is a registered trademark of Matthew Bender Properties Inc. Copyright 2007 Matthew Bender & Company, Inc., a member of the LexisNexis Group. All Rights Reserved. No copyright is claimed in the text of statutes, regulations, and excerpts from court opinions quoted within this work. Permission to copy material exceeding fair use, 17 U.S.C. 107, may be licensed for a fee of 10 per page per copy from the Copyright Clearance Center, 222 Rosewood Drive, Danvers, Mass , telephone (978) NOTE TO USERS To ensure that you are using the latest materials available in this area, please be sure to periodically check the LexisNexis Law School web site for downloadable updates and supplements at /lawschool Editorial Offices 744 Broad Street, Newark, NJ (973) Mission St., San Francisco, CA (415) East Water Street, Charlottesville, VA (434) (Pub.3225)

5 ABOUT THE AUTHOR Cynthia M. Ho is the Clifford E. Vickrey Research Professor at Loyola Chicago School of Law, as well as the Director of Loyola s intellectual property program. Professor Ho has been a member of the faculty since 1997, where she teaches Intellectual Property, Patent Law, Comparative Patent Law, Policy and Health Care, as well as Civil Procedure. She is a recognized scholar of patent law who was been cited in several intellectual property and patent case books. In addition, she has served as a consultant to the United Nations Convention on Biological Diversity (CBD) on an issue at the interface of international patent law and biotechnology and has provided consultation to the National Institutes of Health (NIH). She has also provided lectures on patent law for the Bar/Bri Patent Bar Review. Before joining the faculty at Loyola, Professor Ho practiced intellectual property with Fish & Neave (now the Fish & Neave IP group of Ropes & Gray). She participated in major litigation of high-technology cases involving patents, trade secrets, and unfair competition. In addition, as a registered member of the Patent Bar, she drafted and prosecuted patent applications. v

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7 PREFACE This book may be useful for a variety of contexts, including supplementing a patent class, as well as the patent segment of an intellectual property class. In addition, although this book may be used to supplement study for the patent bar, it is not intended to cover the same range of topics. In particular, the focus here is on substantive areas of patent law, rather than on the intricacies of patent examination that are important to the patent bar exam. For those of you already familiar with the Questions & Answers series, you know that this book contains a variety of questions designed to test and reinforce your understanding. The questions vary in difficulty, ranging from identification of rules, to applying rules to specific fact patterns. For most topics, there are application examples to help test your understanding. In addition, for anyone who wishes to make the multiple choice questions even more challenging, you can try to answer the questions without looking at the options. Although this book cannot possibly attempt to cover every aspect of patent law, hopefully it will at least provide a useful start to reinforcing your understanding through active learning. Perhaps some of the questions here will prompt you to create your own questions to challenge yourself and/or your classmates. After all, the best way to learn is to try to teach others something that I am always striving to do. I am grateful to LexisNexis for creating the Questions & Answers series, as well as for the opportunity to participate as an author. Professor Cynthia M. Ho Chicago, IL November 12, 2007 vii

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9 TABLE OF CONTENTS Page ABOUT THE AUTHOR v PREFACE vii QUESTIONS TOPIC 1: Patentable Subject Matter TOPIC 2: Utility TOPIC 3: Applications, Claims, and Prosecution [A] Applications [B] Claims TOPIC 4: Section [A] General [B] Section 112 Disclosure Enablement [C] Section 112 Disclosure Best Mode [D] Written Description [E] Section Definiteness [F] Section Means Plus Function Claims [G] Section 112 Disclosure Examples TOPIC 5: Section 102 Novelty [A] General [B] Date of Invention [C] Section 102 Prior Art Printed Publication ix

10 x TABLE OF CONTENTS Page [D] Section 102(a) Anticipation [E] Inherencey [F] Genus/Species [G] Section 102(a) vs. Section 102(b) [H] Section 102(b) Statutory Bar [I] Section 102(b) Public Use [J] Section 102(b) On Sale Bar [K] Section 102(b) and the Relevance of Experimental Use [L] Section 102(c) Abandonment [M] Section 102(d) Foreign Filing Bar [N] Section 102(e) Secret Prior Art from an Earlier-Filed Application [O] Section 102(f) Derivation [P] Section 102(g) [Q] Section 102(g)(2) [R] Interference TOPIC 6: Section 103 Obviousness TOPIC 7: Earlier Effective Filing Dates [A] General [B] Earlier Effective Date U.S. Application (Section 120) [C] Earlier Effective Filing Date Foreign Application (Section 119) TOPIC 8: Inventorship TOPIC 9: Patent Rights Introduction [A] Patent Rights Scope of Rights [B] Infringement Analytical Steps [C] Claim Construction [D] Patent Infringement General [E] Doctrine of Equivalents [F] Infringement Examples

11 TABLE OF CONTENTS xi Page TOPIC 10: Patent Rights Advanced TOPIC 11: Patent Term TOPIC 12: Correction of Patents TOPIC 13: Patent Litigation TOPIC 14: Patent Remedies PRACTICE FINAL EXAM ANSWERS TOPIC 1: Patentable Subject Matter TOPIC 2: Utility TOPIC 3: Applications, Claims, and Prosecution [A] Applications [B] Claims TOPIC 4: Section [A] General [B] Section 112 Disclosure Enablement [C] Section 112 Disclosure Best Mode [D] Written Description [E] Section Definiteness [F] Section Means Plus Function Claims [G] Section 112 Disclosure Examples TOPIC 5: Section 102 Novelty [A] General [B] Date of Invention [C] Section 102 Prior Art Printed Publication [D] Section 102(a) Anticipation [E] Inherencey [F] Genus/Species [G] Section 102(a) vs. Section 102(b)

12 xii TABLE OF CONTENTS Page [H] Section 102(b) Statutory Bar [I] Section 102(b) Public Use [J] Section 102(b) On Sale Bar [K] Section 102(b) and the Relevance of Experimental Use [L] Section 102(c) Abandonment [M] Section 102(d) Foreign Filing Bar [N] Section 102(e) Secret Prior Art from an Earlier-Filed Application [O] Section 102(f) Derivation [P] Section 102(g) [Q] Section 102(g)(2) [R] Interference TOPIC 6: Section 103 Obviousness TOPIC 7: Earlier Effective Filing Dates [A] General [B] Earlier Effective Date U.S. Application (Section 120) [C] Earlier Effective Filing Date Foreign Application (Section 119) TOPIC 8: Inventorship TOPIC 9: Patent Rights Introduction [A] Patent Rights Scope of Rights [B] Infringement Analytical Steps [C] Claim Construction [D] Patent Infringement General [E] Doctrine of Equivalents [F] Infringement Examples TOPIC 10: Patent Rights Advanced TOPIC 11: Patent Term TOPIC 12: Correction of Patents TOPIC 13: Patent Litigation

13 TABLE OF CONTENTS xiii Page TOPIC 14: Patent Remedies PRACTICE FINAL EXAM INDEX

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15 QUESTIONS 1

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17 TOPIC 1: PATENTABLE SUBJECT MATTER QUESTIONS 1. Which of the following is true concerning patentable subject matter: (A) (B) (C) (D) To be patentable subject matter, an invention must constitute a process, machine, manufacture, or composition of matter. The only relevant test for assessing patentable subject matter is whether the invention is man-made since anything under the sun made by man qualifies according to the Supreme Court. New uses of previously known compositions are not patentable. Improvements on previously known devices are not patentable. 2. Which of the following did the Supreme Court hold as patentable subject matter in Diamond v. Chakrabarty? (A) (B) (C) (D) Observation of physical phenomena Bacteria in their natural state Methods of inoculating bacteria Living organisms that have been genetically modified. 3. Which of the following is the most accurate statement concerning patentable subject matter? (A) (B) (C) (D) Business methods are considered patentable subject matter despite the fact that the United States Supreme Court has never explicitly ruled on the subject. Computer software is not patentable subject matter because it is subject to copyright protection. A new algorithm is patentable subject matter, regardless of whether it is associated with a new product or process. A new scientific principle concerning the universe would be patentable as a new discovery. 4. Which of the following is the most accurate statement concerning patentable subject matter? (A) Genetically modified plants may not be patentable under the Utility Patent Act because there is separate protection for plants under the Plant Variety Protection Act, as well as under the Plant Patent Act. 3

18 4 Q&A: PATENT LAW (B) (C) (D) A method of performing surgery is not patentable subject matter because it would be immoral and unethical to prevent a surgeon from performing a medically necessary operation. A peanut butter and jelly sandwich is patentable subject matter. A patent applicant must affirmatively state which 101 category (i.e., composition of matter, etc.) the invention falls within in the application. ANSWER: 5. How is a utility patent different than a design patent?

19 ANSWERS 93

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21 TOPIC 1: PATENTABLE SUBJECT MATTER ANSWERS 1. The best answer is A. The categories listed in this Answer correspond to the categories listed under Section 101. While the United States Supreme Court has stated that anything under the sun made by man is patentable in Diamond v. Chakrabarty, it also said that subject matter must nonetheless fall within a category under the statutory section of subject matter. Accordingly, Answer B is incorrect as an incomplete answer. Answer C is incorrect because the statute explicitly states that any new and useful process may be patentable. There is no exclusion from patentability for new methods of using known compositions. Answer D is incorrect because it is inconsistent with the statutory language on patentable subject matter under Section 101. The statute provides that patents are available for new and useful improvement of any of the categories of patentable subject matter. 2. The best answer is D. The claim at issue before the Supreme Court was a genetically modified and still living bacteria. One argument that the claim should be denied was that living matter were per se unpatentable, but a 5-4 majority of the Supreme Court rejected this idea. The Supreme Court was not persuaded by suggestions that granting patents would result in a parade of horribles, or that explicit authority from Congress was required to embrace matter that did not exist at the time the Patent Act was enacted. Methods of inoculating bacteria were considered patentable in the same case, but were not at issue before the Supreme Court. Accordingly C is incorrect. In addition, the Supreme Court clarified that observation of physical phenomena and biological products in their natural state were unpatentable subject matter, such that Answers A and B are incorrect. 3. The best answer is A because although the United States Supreme Court has never explicitly ruled on this, the Federal Circuit, as well as the USPTO, currently consider such methods to be patentable. State Street Bank together with AT&T v. Excel are considered the key Federal Circuit opinions that opened the judicial doors to permitting patentable subject matter. State Street Bank claimed that there was no prior bar to patenting such matter and that the perceived bar was based on cases where the methods were found patentable on other grounds, such as novelty and obviousness. Mere algorithms or scientific principles are never considered patentable as observations of natural phenomena. Accordingly, Answers C and D are incorrect. Computer software may be subject to copyright protection, but that does not preclude the existence of patent protection. Rather, computer software may be patentable under both patent and copyright laws, so Answer B is incorrect. 4. The best answer is C. A sandwich of any sort is a patentable subject matter in that it is a product that could constitute a composition of matter. Although such a sandwich 95

22 96 Q&A: PATENT LAW may not be ultimately granted a patent, that would be on grounds of novelty or nonboviousness and not on the basis of patentable subject matter. In addition, depending on what type of sandwich is claimed, it may be possible to obtain a patent. In particular, an inventor did receive a patent for a sandwich with a special crust and a filling that could comprise elements such as peanut butter and jelly as well as other fillings that were more nontraditional. Even if some products seem unpatentable, it is important to be able to evaluate the proper basis if any. Patentable subject matter is the first, but not the only, criterion that must be satisfied for patentability. Answer A is incorrect. There is nothing in the Patent Act that suggests that subject matter that could potentially be patented under another scheme cannot be given patent protection. In fact, genetically modified plants may face challenges under some of these other provisions which were intended to address plants cultivated without biotechnology they must be either sexually or asexually reproduced. Answer D is also incorrect since there is no requirement that the applicant establish that the invention falls within a specific statutory category of patentable subject matter. Answer B is incorrect, although probably the trickiest false answer. There is no per se exclusion for any method. In addition, while the prospect that a patent might bar medical treatment may sound problematic, there is currently nothing in the Patent Act to provide a basis for excluding such subject matter. In addition, although there is dicta in older cases about a morality requirement, that is for the requirement of utility and is no longer a valid grounds for rejecting otherwise useful inventions. However, if your instinct suggests that this should not be patentable, you are in agreement with many countries beyond the United States. For example, many countries in Europe have a bar on patenting medical procedures. In addition, although the United States permits patenting such procedures, most such procedures are not enforceable against doctors due to an amendment of the patent laws in the late 1990s as a result of a high profile case, Pallin v. Singer, involving a surgeon who was sued for patent infringement. The enforceability provision is in 35 U.S.C 287(c), but only the direct infringer the doctor is immune from liability, such that secondary liability is still theoretically possible. 5. A design patent is granted for a new, original and ornamental design for an article of manufacture, under section 171 a different provision than the patentable subject matter provision used for utility patents. The basic difference is that utility patents are for inventions that are functional (hence, the term utility ) whereas design patents provide protection for what is not functional. For example, a special shape of a bottle, or the sole of a shoe could be subject to protection under a design patent if it is solely ornamental and not functional. The term for design patents is shorter than for utility patents (14 years from grant versus 20 years from the effective filing date).