BLW 360 – January 27, 2015 Jonathan LA Phillips

 A grant from the USTPO  What bargain is struck between the inventor and the government?  Whats it get you? Why is it more powerful than © & trade secret?  Utility, design, and plant patents  No common law rights  Focus on utility patents. If questions about others, please raise them.

 Utility, design, or plant;  Useful, ornamental, or distinctive;  Novel;  Non-obvious.

 Apply to USPTO  Manual of Patent Examining Procedure (MPEP).  Title 37 Code fo Federal Regulations

 “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or an improvement.” - 35 USC § 101.  What is a process? A machine? A manufacture? A composition of mater?

 Must be of some use to society. What isn’t useful?  Are research articles useful?  Application must specify the usefulness. Why?

 Must be “new.”  First to file switch with America Invents Act. You’re lucky, it was a lot worse in the bad ole’ days.  What makes something not novel? Publication / Public Use  Can an inventor make his own invention non-patentable for not being novel?

 What is non-obviousness? Is it the same as novelty? If not, how is it different?  Prior art. What is it?

 Graham v. John Deere Co., 383 US 1 (1966) Analogous prior art. Differences & superior results. Level of ordinary Skill Bonus – Secondary Considerations – needs nexus  Commercial success  Long felt need  Commercial acquiesence  Copying

 Combination patents What is a combination patent? Example? How are these not obvious, they are combinations.  KSR International Inc. v. Teleflex, 550 US 398 (2007). Fighting words – “ordinary innovation” and “predictable results.” Did it kill off the “teaching, suggestion, motivation test?”  Double patenting & terminal disclosures

 Diamond v. Chakrabarty, 447 US 303 (1980) “anything under the sun made by man.”  Laws of nature.  How do you get a patent on these, indirectly? Diamond v. Diehr, 450 US 175 (1981)  Bilski v. Kappos, 130 S. Ct (2010).

 Usefulness  ornamentality.  Article of manufacture  New  Original  Ornamental  What other forms of IP can cover design patents? Examples? Advantages / Disadvantages.

 To my knowledge, no one has a background that suggests they care about plant patents, but know that the Plant Variety Protection Act protects them as well and is administered by Dept. of Agriculture

 Know the chart on page 350.

 Specification;  Claims;  Drawing;  Oath.

 Describes invention and tells how to make it.  Must be enabling. Why?  Must provide best mode. Why?

TYPES  We will have an exercise on this later on, so pay attention. Look at p  Define the scope of invention in one sentence. Independent claims; Dependent claims. Functional (means plus function) Product-by- process (defines the product by its process Jepson (an improvement) Why would you use this one? Markush (chemistry & biochemistry)

 Do you have to provide a prototype? Can the USPTO make you? How can you know it works without a prototype?

 OF INVENTOR AIA changed that. Joint applications. Typical attack.

 What is an office action?  How do you fix it? How do you get around non-obviousness? Can you amend the specification? If so, how?  Divisional / Continuing applications. When are these needed? Advantages?  The examiner still won’t grant the registration. Now what?

 Protests New under AIA When would you use it? Why? What do you do?  Derivation Proceedings

PROSCONS  Ultimate protection  No independently created inventions  May be only source of protection  …  Only 20 years  No protection until registration  Costly  Have to disclose to world  …