I.

Introduction
A. Overview of Patent Rights and Patent Process
B. The Architecture of a Modern Patent
C. Understanding Patent Claims
II. Disclosure and Claiming
A. Introduction
1. Disclosure Theory and Policy
2. Anatomy of § 112
B. Enablement, 35 U.S.C. §112(a)
1. Constraining Claim
Scope (Incandescent Lamp)
2. Undue Experimentation
- Cedarapids; Atlas Powder
3. Toward Full Scope Enablement
- Sitrick; Wyeth
4. Prophetic Examples
5. Problems in Enablement
C. Written Description, 35 U.S.C. § 112(a)
1. Justifying the Requirement; Contours - Vas-Cath
2. Limitation on Claim Amendments - Gentry Gallery
3. Limitations on Claim
Breadth – Ariad

D. Best Mode, 35 U.S.C. § 112(a)

E. Claim Definiteness, 35 U.S.C. § 112(b) - Orthokinetics; Nautilus
F. Markush Claiming

III. Novelty
A. Novelty Under the AIA
1. Introduction
2. AIA § 102(a)(1); Non-Doc. Prior Art - Pfaff; Helsinn
3. Public Uses – Egbert
4. More on Public Uses - Moleculon; Metallizing
5. Doc. Prior Art – Klopfenstein
6. The Identity Requirement - Robertson
7. Accidental and Inherent Anticipations - Seaborg; Schering
8. The Enablement Standard for Anticipation - Hafner
9. New Use and Blocking Patents

B. Novelty Under Pre-AIA Law

1. Introduction
2. Pre-AIA §§ 102(b), 102(e), 102(a)
3. § 102(g)(2) - DOW
4. Priority; “Swearing
 Behind” (Rule 131)

IV. Nonobviousness
A. Introduction/Historical Roots - Hotchkiss
B. 35 U.S.C. § 103(a); The Basic
Graham Inquiry – Graham, Adams
C. Post-Graham and KSR
D. Applying the Framework
1. Constructing the PHOSITA – Daiichi
2. Common Sense – Perfect
Web
3. Objective Indicia of Nonobviousness - Arkie Lures; Iron Grip; Transocean
4. Available Prior
Art/Analogous Art Doc. –
Clay

E. Nonobviousness Post-KSR
F. Some “Classic” Nonobviousness Cases (Papesch, Aller, Soni, Grabiak, Mintz)

V. Utility
A. Introduction
B. Beneficial/Moral Utility - Lowell; Juicy Whip
C. The Modern Utility Requirement
- Brenner; Fisher

VI. Patentable Subject Matter

A. “Anything Under the Sun that is Made by Man” - Chakrabarty
B. Exclusion of Natural Laws/Prods./Phenomena - Mayo; Myriad
C. Abstract Ideas- Bilski; Alice; Brown

VII. Patent Claims and Infringement

A. Substantive Aspects of Claim Interpretation
1. Basic Doctrine - Phillips
2. Interpreting Claims in Context
B. Procedural Aspects of Claim Interpretation - Markman
C. Literal Infringement – Larami
D. The Doctrine of Equivalents (DOE)
1. Basic Doctrine - Warner-Jenkinson
2. Refinement and Limits
- Festo; Mylan
E. Indirect Infringement - Aro; Global-Tech; Commil
F. Declaratory Judgments - MedImmune; Prasco

VIII. Selected Patent Infringement Defenses

 A. Invalidity and Noninfringement
B. Inequitable Conduct - Intellect Wireless
C. Exhaustion and the “First Sale” Doctrine - Impression Prods.

IX. The Legal Process of the Patent System

A. The Allocation of Power
B. The PTAB
X. Remedies
A. Permanent Injunctions – eBay
B. Damages: Lost Profits - Rite-Hite; Am. Maize
C. Damages: Reasonable Royalty - Lucent
D. Willful Infringement and Enhanced Damages
Halo

Seymore Examples
- Blocking Patents Example
- If A has a dominant patent, A can prevent B from making, using, selling, offering to
sell, and importing anything covered by B’s Patent.
- BUT –
o Patent ≠ give owner right to practice invention (freedom to operate) BUT
consider this scenario:
 B can exclude A from making, using, selling, offering to sell, and
importing anything w/in scope of B’s patent.

Improvement Patents Example

- 2008 → G gets patent for razor
w/ 4 blades
- 2010 → S developed 5 blade
razor
o If the addition of the 5th blade is new and nonobvious, S
can obtain patent.
- We say S cannot get a patent b/c it is an improvement of what is
already known → If S gets a patent, it can’t do anything w/ it b/c
it is blocked by G.
- RULE: If practicing the improvement requires practicing the
earlier patent, practicing the improvement w/o a license =
infringement.
 Relevant Laws
• Patents are EXCLUSIVELY GOVERNED BY FEDERAL LAW and can only be acquired
by filing a patent application with the U.S Patent and Trademark Office. The PTO is a federal
agency located in Alexandria, Virginia.
- 35 U.S. C. § 154(a)(1)-(2)
- patent grant[s] the patentee the right to exclude others from
o making, using, offering for sale, or selling the invention throughout the United
States or importing the invention into the United States
o for a term beginning on the date on which the patent issues and ending 20
years from the date on which the application for the patent was filed.
 If someone uses patent w/o license, patentee can sue for infringement
and seek damages and/or an injunction.
- U.S. Const. art. 1, § 8, cl. 8 - Intellectual Property Clause
o Congress has the power to promote the progress of science and useful arts, by
securing for limited times to authors and inventors the exclusive right to their
respective writings and discoveries.”
• Statute: Title 35 of the U.S. Code
• Patent Act of 1952 (“first-to-invent” regime)
• America Invents Act of 2011 (“first-inventor-to-file” regime)
• Patent Rules: Title 37 of the C.F.R.
• Judicial Opinions (common law)
Patentability Requirements
• Eligible Subject Matter, 35 U.S.C. § 101
• Utility, 35 U.S.C. § 101
• Novelty, 35 U.S.C. § 102
• Nonobviousness, 35 U.S.C. § 103
• Adequate disclosure, 35 U.S.C. § 112(a)
• Claim definiteness, 35 U.S.C. § 112(b)
35 USC §122 → Most apps publish 18 months after earliest effective filing
date unless applicant states foreign patent protection will not be sought
35 USC §132(a): Applicant CAN Amend, cancel, argue, amend written description, but
never add NEW MATTER!
 Applicant can appeal directly to Fed. Circuit per 35 USC §141 → NO ADDITIONAL
EVIDENCE PERMITTED
 Applicant bring a civil action in the USCS for E.D.Va per 35 USC §145

I. Introduction
Theological Perspective:
- inventive process produces 2 things bringing interest to society: The invention itself
and the technical detailed disclosed within the patent document.
- How can the inventor protect?
o Give it to the public for free, maintain as a trade secret, get a patent
 W. patent → inventor gets exclusory right, public gets immediate
 disclosure.
 At the end of patent term → public gets invention.
Patent Benefits
 The right to exclude (w/ that → exploit), exclusivity, licensing patented technology,
positive marketing benefits
 Economic Rationales: Reward theory (incentive to invent), inducement theory, and
incentive to disclose theory
three typ es of patents offered under U.S. law
• utility patent:
◦ most prominent category of patents - protects how something is used and works -
useful creations
‣ commonly called “patents” without any modifier. (Don’t confuse a utility
patent with a utility model, a kind of “junior patent” available in some
foreign systems but not in the U.S.)
• design patent:
◦ protects how something looks - cover decorative rather than useful creations
‣ for example, a new, aesthetically pleasing lamp design.
• plant patent:
◦ new and distinct asexually reproduced plants
Job of Patent Examiner
◦ reviews patent applications for compliance with patent rules and laws.
◦ regarded as quasi-experts in their respective fields. Most do not possess law degrees.
◦ Each application is assigned to a patent examiner (will be solely responsible for the
examination process
- normally months or more until a patent examiner actually picks up the application).
‣ During this period, applicants may file additional papers (EX -
information disclosure statement (IDS), describing prior art known to the
applicant at the time of filing, 37 C.F.R. §§ 1.97, 1.98, or preliminary
amendments (changes made to the application before the examiner’s first
communication or “Office Action (formal document which sets forth rejections
that the examiner believes prevent the application from being allowable).
• Proceedings of patents - always called prosecution.
◦ - The record of the prosecution proceedings is called the prosecution history (or the
file history).
◦ proceeding is ex parte (proceeding only between the applicant and the examiner)
‣ time + effort required to prosecute a patent varies immensely by case (average =
23 Months)
‣ A few applications are reviewed quickly and issued within a year of
the application date, but the average prosecution pendency is much longer.
• The label “final rejection” = misnomer.
◦ applicant can respond to a final rejection - typically a
continuation application or amendment after final rejection
under 37 C.F.R. § 1.116.
◦ If the applicant feels continued prosecution ≠ worthwhile, (ex - because there are
 clear disagreements with the examiner) may file an appeal to the Patent Trial and
Appeal Board (AKA Board of Patent Appeals and Interferences) administrative
tribunal within the PTO).
◦ An applicant whose claims stand rejected can file a request for continued examination
(RCE).After prosecution closes, applicant can pay for additional examination when the
examiner would otherwise not provide it; meaning that prosecution of previously
pending application reopens.
• The examiner can ALLOW, REJECT, or OBJECT TO claims

Patent Claim Drafting

• Basics:
◦ Category of invention:
‣ 4 different categories:
• processes
• machines
• manufacturers
• compositions of matter
‣ 2 kinds of inventions:
• processes
◦ series of steps or actions
• products
◦ tangible things
◦ one claim may cover processes, the other the product
◦ overall goal: make the claims as broad as the patent office will allow

Patent Document Parts

• Title page (Inventors, Assignee, Filing Date, Abstract)
• Technical field of the invention
• Drawings
• Background
• Written Description
‣ • Claims: essence of legal rights given by patent
• INID codes - internationally agreed numbers for identification of
bibliographic data
• U.S. patent number
• Issue date - directly below the patent number
• Title of the invention
‣ if ≠ sufficiently descriptive of invention claimed - examiner can require
applicant to change title
• inventor and assignee information
‣ patent act requires the inventor to be identified
‣ If inventor is employed by company to create, corporation is assigned the
 rights to their inventions
• Application information
‣ patent term = generally 20 years of protection
• domestic and international classifications
• fields of search, references cited and other info on prosecution
• abstract
‣ provides brief summary of technical disclosure
‣ required to enable PTO + general public to quickly determine from a
cursory inspection the nature and gist of technical disclosure
‣ federal circuit has held courts may use abstract to interpret patent claims
‣ power of examiners to amend abstract should not be greater than the
limited power they have to amend other portions of patent specification
• In between - "consisting essentially of"
‣ Body
• Must: list claim would cover a variant having the element D only if
element D did not make the variant different than the claimed
invention

Prior to Prosecution:
‣ Inventor Discloses
‣ Patent attorney/agents draft application, containing:
• Specification (written description + claims), drawings, oath, fee
• written description, enablement, and best mode
requirements must be disclosed at the time of filing
‣ Upon receipt → PTO records filing date and application gets assigned to an
examiner

Patent Document Language – Transition Terms

comprising: open term
◦ shorthand way of saying “including the following elements but not excluding others.”
‣ Ex - a claim to a combination comprising A + B covers a combination having A
+B
+ C. In general, a patent attorney drafts claims containing a minimum
number of elements that will function in a combination and uses the open
term comprising in order to cover the invention as broadly as possible
under the patent.
consisting of: a combination consisting of A + B does not cover the combination A + B +
C.
• consisting essentially of: is partly open and partly closed
◦ mainly used in chemical composition inventions and is a way of saying
“excluding additional unspecified ingredients which would affect the basic and
novel characteristics of the product defined in the balance of the claim.” Thus, a
claim to a combination consisting essentially of A + B language would cover a
 combination of A + B + C if C is not vitally important to the combination

3 main parts of a claim:

◦ preamble
‣ should be as broad as possible
‣ introduces basic nature of invention
◦ transition
‣ 3 types:
• open claims - "comprising"
◦ claim covers embodiment of A,B,C and any additional elements
◦ If someone sells A,B,C,D they are infringing
• closed claims - "consisting of"
◦ Invention consisting of elements A,B, and C.
◦ a variant that incorporates D does not infringe

Office Action
Examiner Action
◦ Restriction
- If the examiner finds applicant claimed MORE than 1 invention → examiner will
restrict application to 1 invention (35 USC §101)
‣ Why do examiners issue restriction requirements?
• Substantive Review (on the merits)
• Examiner gauges compliance w/ statutory patentability reqs
• Prior-Art Based
• Restriction based on prior art, novelty or nonobviousness
• Non-prior Art Based
• Possibly based on utility, eligible subject matter, adequate disclosure
(enablement, written description), claim definiteness
◦ Election
- Applicant must ELECT to prosecute 1 invention and any others in separate apps
(aka divisional)

Applicant Response

 Applicant CAN:
o Amend, cancel, argue, amend written description, but never add NEW MATTER!
 35 USC §132(a).

Possible Examiner Reconsideration

 Examiner CAN:
o Issue a notice of allowance (allowing some or all of the claims)
o Issue a second office action (If no new ground of rejection → final office action)
o When Final Office Action Issues → PROSECUTION ENDS
Post Issuance

 Applicant can:
o Abandon Application
o File a continuation application
o File a request for continued examination (RCE)
o Appeal to the Patent Trial and Appeal Board (PTAB)

Patent Continuation
◦ Filing a continuation resets the examination process.
◦ Continuation = New Version of the application
◦ simple continuation application (“CON”):
‣ same written description as the parent, retains the benefit of the initial (parent)
application’s filing date.
• may serve much the same role as an amendment.
• Usually filed when prosecution closed with all claims being rejected
• or if applicant had to cancel some claims to place parent in condition for
allowance
‣ ALSO used when applicant raises new issues, arguments, or amendments post
final rejection.
◦ continuation-in-part (“CIP”):
‣ adds new matter to the written description.
‣ new matter – therefore does not retain the benefit of the earlier filing date,
though any information carried over from the original filing does.
• CIP has multiple filing dates
◦ divisional (“DIV”):
‣ which the applicant prosecutes in response to a restriction requirement.
‣ same written description as the parent but different claims (those not elected in
the parent application).

Appealing to the Patent Trial and Appeal Board

 If applicant ≠ satisfied with prosecution outcome → can appeal to PTAB (administrative
Board at the PTO)
 The PTAB CAN:
o Reverse and remand to examiner for reconsideration
o Affirm examiner decision → in whole or in part
 If affirmed →
 Applicant can appeal directly to Fed. Circuit per 35 USC §141
o W/ this option → NO ADDITIONAL EVIDENCE
PERMITTED
 Applicant bring a civil action in the USCS for E.D.Va per 35 USC
§145
o W/ this option → additional evidence permitted, appealable
 to Fed. Circuit
Publication of Patent Application
 Prior to 2001 → Patent apps ≠ publish, and remained secret unless patent issued.
 Currently → 35 USC §122 → Most apps publish 18 months after earliest effective
filing date unless applicant states foreign patent protection will not be sought
o If you abandon before 18 months they won’t publish, but any other
application will publish at 18 months if not granted and therefore
published earlier
Patent Litigation
 Patentee can bring:
o Infringement suit
 Potential infringer can bring:
o Declaratory judgment
 AIA Post grant proceedings at the PTO
 Inter Partes Review
 Post Grant Review
 Interference Proceedings:
o priority dispute between two or more inventors, all of whom claim to
have been the first inventor of a particular invention.
o For patent applications filed after 16 March 2013 (AIA):
 interferences are no longer available—major change
due to the AIA’s “first inventor to file” priority rule.
However, a patent applicant who files second but who
believes the first filer stole (or “derived”) the invention
from the second filer, may initiate a Derivation
Proceeding under the AIA.

Patent Claim Drafting

• Basics:
◦ Category of invention:
‣ 4 different categories:
• processes
• machines
• manufacturers
• compositions of matter
‣ 2 kinds of inventions:
• processes
◦ series of steps or actions
• products
◦ tangible things
◦ one claim may cover processes, the other the product
◦ overall goal: make the claims as broad as the patent office will allow
◦