6.1 chapter 6 patents © 2003 by west legal studies in business/a division of thomson learning

6.1

Chapter 6

Patents

© 2003 by West Legal Studies in Business/A Division of Thomson Learning

6.2

Overview of Patent Law

Invention Patent Embodiment Qualification procedure Patent prosecution Examiner and examination process

6.3

InternationalPatent Law

Discuss the impact of each of the following international laws:

1.Paris Convention

2.Patent Cooperation Treaty

3.European Patent Convention

4.Patent Law Treaty

5.Trade Related Intellectual Property

Let’sDiscuss

Let’sDiscuss

Let’sDiscuss

Let’sDiscuss

6.4

Patentability: Areas of Patentable Subject

Matter

Machine

Manufacture

Process

Composition of matter

6.5

Patentability: Areas of Non-Patentable Subject

Matter

Naturally occurring things

Abstract ideas

Laws of nature

Mathematical formulae

6.6

Other Areas of Patentability

Methods of doing business

Computer software

Biotechnology

6.7

Patentability: Novelty

Publicly-available knowledge

One-year grace period

First-to-invent

Searching the prior art http://www.uspto.gov/patft/index.html

http://www.libraries.psu.edu/business/patents/search.htm

6.8

Patentability: Non-obviousness

The patent should not be The patent should not be granted on a novel granted on a novel

invention if the invention if the advancement is small advancement is small and represents merely and represents merely minor improvements minor improvements

over the prior art.over the prior art.

6.9

Patentability: Non-obviousness

Three step analysis required by Supreme Court

Determine scope and content of prior art

(Graham v. John Deere Co., 381 U.S. 1 (1966))

Search and analysis of

Published patents

Scientific journals

Textbooks

6.10

Patentability: Non-obviousness

Three step analysis required by Supreme Court

Determine the level of skill of the person of ordinary skill in the art

Takes perspective of other possible inventors

6.11

Patentability: Non-obviousness

Three step analysis required by Supreme Court

Compare with prior art

Are improvements significant?

6.12

Patentability:Secondary Considerations

Long felt, unmet need

Commercial success

Use or copying by others

6.13

The Patenting Process

The Patent and Trademark Office Manual of Patent Examination Procedure

The patent application

Ethical consideration

Inventorship

Provisional patent applications

The PTO’s electronic filing system

Disclosure Secrecy

6.14

Patent Infringement

1. Literal infringement

2. Doctrine of equivalents

3. Defenses to infringement

Patent Office

6.15

Remedies

Equitable remedies

Legal remedies

International remedies

6.16

Sui Generis Protections

Design patents

Semiconductor chip protections

Plant patents

Protected Not Protected

6.17

Questions & Discussion