Patent Law Overview

Patents

• Patents protect the holder by allowing them to exclude others from making, using, selling, offering to sell, and importing the patented invention.
• A patent typically lasts for approximately 20 years after the patent application date.
• Patents have three main components: description, figures, and claims.
  • The description explains the invention.
  • The figures show the invention.
  • The claims define what the invention covers, and are crucial for determining whether something infringes on the patent.

Patent Prosecution

• Patent prosecution involves the interaction between a patent application and the USPTO (U.S. Patent and Trademark Office) before a patent is issued or abandoned.
• The process often involves multiple rounds of argument and claim amendments.

35 U.S. Code § 102

• A patent may not be granted if the claimed invention was previously patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
• If an invention is used or sold publicly before the patent application, the inventor loses the right to a patent.

City of Elizabeth v. American Nicholson Pavement Co.

• If an invention is placed in public use for more than two years, the inventor has abandoned the right to a patent.
• A patent is still valid even if the invention was used for experimentation and testing purposes.

Diamond v. Chakrabarty

• A man-made organism is patentable subject matter.

Mayo Collaborative Servs. v. Prometheus Labs., Inc.

• A natural law or phenomenon must be sufficiently added upon or transformed to be patentable.

Bilski v. Kappos

• A method for protecting risk in purchase of energy commodities is not patentable.
• The machine-or-transformation test is an additional tool for determining patent eligibility of a process.

Alice v. CLS Bank

• A claim that involves an abstract idea is patentable only if it significantly modifies the idea for a new end.
• Claims that simply add a computer component to a pre-existing idea are not significant enough for patentability.

Patent Term Effective June 8, 1995; America Invents Act

• The patent term for applications filed before June 8, 1995 may be greater than 20 years depending on grant date.
• Applications filed after June 8, 1995 have a fixed 20-year term from the filing date.
• Prior to the America Invents Act, the first inventor, not the first filer, received the patent.
• The America Invents Act changed this to the first filer receiving the patent.

Brenner v. Manson

• A claimed process is not patentable if it does not provide a present, specific benefit for society.

In re Fisher

• A claimed invention must exhibit a significant, presently available, well-defined, and particular benefit to the public.
• Speculative uses are not enough for patentability

In re Clay

• Prior art is considered analogous if it is from the same field of endeavor, regardless of the problem being addressed.
• If prior art isn't in the same field of endeavor, it must still be relevant to the inventor's problem.

Kimberly-Clark v. Johnson & Johnson

• The inventor's knowledge of another inventor's non-public work does not automatically make it prior art.
• The work must be fully realized and functional.

Great A&P Tea Co. v. Supermarket Equipment Corp

• Mere extension of an existing element in a product is unlikely to be considered a patentable invention.
• A new invention must provide an improvement that rises above the current state of the art.

KSR v. Teleflex

• A claimed invention is obvious if a skilled person would predict it based on prior art principles. Combining known elements often does not constitute an invention.

Alice Corp. Pty. Ltd. v. CLS Bank International

• The Supreme Court refined how patent law interprets claims related to abstract ideas.

Trade Secrets

• Trade secrets are confidential information that has economic value and is kept secret by the owner.
• They can be protected by state and federal (e.g., Defend Trade Secrets Act of 2016 laws).

Copyright

• Copyright protects original works of authorship that are fixed in a tangible medium of expression.
• The copyright is generally granted automatically to the creator upon creation of the work.
• Copyright protection generally lasts for life of the author plus 70 years.
• Copyright holders have exclusive rights to reproduce, distribute, display, and create derivative works of the protected material.
• Fair use allows limited use of copyrighted works for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.

Trademark

• A trademark is a distinctive symbol, design, or phrase, legally registered to represent a brand and distinguish it from others.
• Trademarks protect the source of products from confusion.
• A trademark can be a word, phrase, symbol, design or a combination.
• Trademarks need to be used in commerce to qualify for protection. Not all trademarks are registered.
• General terms cannot be trademarks (e.g., "pencil" or "car”).