Agenda for 4th Class

1
Agenda for 4th Class

• Statutory Bars
• Nonobviousness

2
Assignment for Next Class

• Distributed in class
• Already to website

3
Administrative Stuff I

• Recorder on
• No class this Thursday
• Sign-in sheet
• Slide handouts
• Amazon assignment
• Model Merck answer to web
• Bonus points if you find non-trivial errors

4
Review

• Gene patents
• Genes are patentable
• Like B12 purified version of something existing
  in nature
• Incentives to discover
• Genetically engineered organisms patentable
• Novelty. 102(a). Only first to invent can get
  patent
• Priority. 102(g). First conceive has priority,
  unless 2nd to conceive was first to reduce to
  practice and 1st to conceive was not diligent
• Statutory Bars. 102(b). Applicant barred if
  invention described in printed publication, used
  publicly, or on sale more than 1 year before
  patent application

5
Homework Questions

• 1) Was the case decided under 102(a) or 102(b)?
  How do you know?
• 2) The statute referred to in question 1 has been
  amended since 1881 when Egbert was decided. How
  was it changed? Were the changes favorable or
  unfavorable to patent applicants?

6
Homework Questions

• 3) Suppose Mark Lemley independently invented the
  same improved corset-springs in 1856.
• a) If Barness patent were valid, what would
  Lemleys rights and/or liabilities be regarding
  the invention?
• b) Is there evidence in the opinion of inventors
  in a position similar to Lemleys? If so, what
  is the evidence?
• c) If Lemley had applied for a patent on the
  invention in 1856 (and satisfied all requirements
  for patentability other than 35 USC 102), would
  he be entitled to the patent? In answering this
  question, consider the full text of the statute.

7
Homework Questions

• 4) As a matter of policy, do you think the
  opinion was correctly decided? In answering this
  question, consider both efficiency and fairness.
• 5) Suppose Barnes had not allowed Miss Cugier or
  anyone else to wear the improved corset-springs
  except for short periods of time in Barness home
  to test the corsets comfort and effectiveness.
  Instead, suppose Barnes had posted a detailed
  description of the invention to his personal
  website in 1860 (assuming that the worldwide web
  had existed at that time). Would Barnes be
  entitled to the patent, assuming he had satisfied
  all requirements for patentability other than 35
  USC 102?

8
Variation on Egbert

• 1/1/1980. Barnes invented improved
  corset-springs. Barnes did not allowed Miss
  Cugier or anyone else to wear the improved
  corset-springs except for short periods of time
  in Barness home to test the corsets comfort and
  effectiveness.
• 1/1/1981. Larry Lessig independently invented the
  same improved corset-springs.
• 2/1/1982. Lessig started selling the improved
  corset-springs.
• 3/1/1983. Barnes applied for patent
• Would Barnes be entitled to the patent, assuming
  he had satisfied all requirements for
  patentability other than 35 USC 102?

9
Commercial v Personal Use

• Some courts now distinguish btw personal use and
  commercial use
• All commercial use, even secret commercial use,
  triggers public use bar
• Use for personal interest or enjoyment not
  considered public use
• How would apply to Egbert?

10
Important Statutory Bar Cases

• City of Elizabeth v Pavement Company, 97 US 126
  (1877)
• Experimental use does not trigger statutory bar
• 6 year use of new paving technology on city
  street did not bar patent application, b/c needed
  to test durability
• In re Hall, 781 F2d 897 (Fed. Cir. 1986)
• Printed publication is anything accessible to
  public
• One copy of PhD dissertation in university
  library is sufficient to trigger publication bar

11
Hypothetical I

• Robert Merges worked for Intel, and Intel is part
  of Sematech, a research consortium involving all
  firms in field.
• 1/1/05. Merges invented new technique for
  fabricating semiconductors.
• 2/1/05. Intel circulated detailed memo about
  invention to all firms in Sematech.
• 2/1/06. Merges applied for patent
• Is Merges entitled to a patent (assuming all
  requirements other than 102 have been
  satisfied.)

12
Hypothetical II

• Robert Merges worked for Intel.
• 1/1/05. Merges invented new technique for
  fabricating semiconductors.
• 1/2/05-6/1/06. Intel used technique to produce
  semiconductors.
• 6/1/06. Merges applied for patent
• Is Merges entitled to a patent (assuming all
  requirements other than 102 have been satisfied.)

13
Nonobviousness

• 35 USC 103
• patent may not be obtained.... if the
  differences between the subject matter sought to
  be patented and the prior art are such that the
  subject matter as a whole would have been obvious
  at the time the invention was made to a person
  having ordinary skill in the art to which the
  said subject matter pertains
• Like novelty, look to prior art
• but more stringent than novelty
• not enough that new
• has to be such that person skilled in art would
  not think obvious
• Most important of patentability requirements

14
Policy of Nonobviousness

• dont want to give monopolies for things for
  which little or no inventive effort is necessary
• No need to give incentives for such inventions
• will be made anyway
• Because invention would be invented anyway,
  giving patents just increases product costs and
  transactions costs
• So nonobviousness requirement is way that
• Minimize costs of IP
• i.e. transactions costs, deadweight loss of
  monopoly
• Without adversely affecting incentives

15
Secondary Considerations

• Hard to determine obviousness
• In hindsight, things often look obvious
• Courts sometimes look to other indicia
• Called secondary considerations, or objective
  factors
• Commercial success
• Long felt but unsolved need
• Failure of others
• Just factors, not dispositive
• Sometimes commercial success has nothing to do
  with non-obviousness in technical sense
• E.g. Pet rock, wheeled luggage