Patent Law – Outline.docVIP

Patent Law – Golden – Fall 2004 I. Patentability/Validity 1 A. Patentable Subject Matter 1 B. Utility 2 C. Novelty 4 D. Priority 7 E. Nonobviousness 9 F. Statutory Bars 11 G. Disclosure Enablement 13 II. Infringement 14 A. Claim Construction 14 B. Literal Infringement 16 C. Doctrine of Equivalents Prosecution History Estoppel 17 D. Indirect Infringement 20 E. Remedies 21 III. Policy 22 A. Global Differences 22 I. Patentability/Validity Patentable Subject Matter Statutes: §101. Inventions Patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. §100. Definitions: When used in this title unless the context otherwise indicates– “Invention” means invention or discovery “Process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material Evidentiary Standard: Question of law Doctrine: “Anything under the sun that is made by man” is patentable BUT NOT “laws of nature, physical phenomena, and abstract ideas”: The inquiry should focus on “the essential characteristics of the subject matter, in particular, its practical utility” Living things: Patentable IF made my man – e.g., genetically engineered micro-organism, Oncomouse (U.S. only) – UNLESS a human being or human-animal hybrid (“chimera”) NOT patentable otherwise Substances found in nature: Patentable IF not in naturally occurring form – e.g., salt purified from naturally-occurring adrenaline, DNA sequence – BUT NOT if merely a mixture of naturally occurring things with no change in properties – e.g., mixture of naturally occurring bacteria NOT patentable otherwise – e.g., a newly discovered mineral found in the ground, a new plant found in the wild Mathematical processes: Patentable IF applied in a useful way, i.e., used in conjunction with a structure or pr