Intellectual Property Law, Prof. Siebrasse	Patent Overview

Intellectual Property Law
Patent Law
Overview

1.	Patent Law
2.	Overview
3.	Outline
a.	Effect of patent protection
b.	Substantive requirements for patent protection
c.	Procedural requirements for patent protection
d.	Form and interpretation of patents
4.	Effect
a.	True monopoly
i.	S.42 Exclusive right “of making, constructing and using the invention and selling it to others to be used” 
ii.	Independent creation is not a defence
iii.	Contrast with copyright
b.	Term
i.	20 years from filing
(1)	Problem: Office delay affects issuance date
ii.	(Old system – 17 years from issue)
(1)	Problem: “submarine” patents
iii.	Contrast with much longer copyright term
5.	Effect
a.	Patent is a right to exclude
i.	Not a right to practice
ii.	The wording of the Act is ambiguous, but the principle is perfectly clear
(a)	42. Every patent granted under this Act . . .shall grant to the patentee . . .the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used. . .
b.	You may patent a weapon, but this does not give you the right to use it
(1)	Also GM crops, cloning, etc.
c.	A patent may be granted for an improvement to a patented invention
i.	Result is “blocking patents”
6.	Procedure
a.	A patent must be applied for and specifically granted after examination
i.	Contrast copyright where protection is automatic
7.	Procedure
a.	The issued patent is the application
i.	The patentee (or the agent) writes the patent
b.	Examination
i.	The patent application must be examined by patent office before it will be issued
ii.	On examination the patent office will often make objections
(1)	e.g. the patent is broader than the invention, 
(2)	the disclosure is not sufficient
iii.	The patent agent will answer these objection, often by modifying the patent
(1)	This is known as “patent prosecution”
8.	Examination
a.	Examination is not automatic
i.	A patent is examined only after request and payment of a fee
ii.	If the patent is never examined, it will never issue
iii.	Note: examination is automatic in the US
b.	Whether or not a request is made, the patent will be made public (”laid open”) 18 months after it is filed
i.	Note: patent applications were traditionally kept secret in the US and still may be if the applicant certifies that she is not seeking any foreign patent
9.	Examination
a.	Advantages of deferred examination
i.	Save costs by avoiding the expense of examining applications which would otherwise be abandoned
ii.	Allows CIPO to rely on prior examination by US/EPO
b.	Why file if you do not intend to request examination?
i.	Filing establishes priority under “first to file”
ii.	Novelty is decided as of the filing date
iii.	Allows a chance to see whether the invention is worth pursuing
c.	Why doesn’t the US have deferred examination?
10.	International Patent Application
a.	International patent application
i.	Patents, like copyright, are national
(1)	Though the EU is moving towards a single EU patent
ii.	Patent Cooperation Treaty
(1)	Not an international patent
(2)	Establishes a procedure for making simultaneous applications in multiple jurisdictions
iii.	European Patent Convention
(1)	Single procedure for grant of a European patent
(2)	Results in a bundle of national patents
(a)	Post-grant – infringement, validity, scope – is determined by national law
11.	Substantive Requirements
a.	Invention
i.	Utility
ii.	Novelty
iii.	Non-obviousness
b.	Disclosure
c.	Subject matter
12.	Invention
a.	Utility
i.	Output
(1)	How much benefit to society?
b.	Novelty & Non-Obviousness
i.	Input
(1)	How much technical difficulty?
13.	Novelty & Non-Obviousness
a.	How difficult was it to come up with the device?
i.	Non-Obviousness
(1)	Did the invention require the lure of a patent?
(2)	High hurdle, in principle
ii.	Novelty
(1)	Minimal hurdle
(2)	Less stringent than non-obviousness
(3)	Much easier to assess
b.	The patent monopoly is bad
i.	Do not grant unless necessary
14.	Utility
a.	How much benefit to society?
i.	Utility hurdle is low
(1)	The invention must work as described
ii.	No need to show commercial value
(1)	Why not?
iii.	Some suggestion that immoral inventions cannot be patented
(1)	Generally morality is not in issue: Why not?
b.	If the goal of patents is to benefit society, why not grant patents only for patents that do in fact benefit society?
i.	High utility and high inventiveness requirements?
15.	Utility v Inventiveness
16.	Invalidity
a.	Validity is an issue both 
i.	during examination and 
ii.	during an infringement action
b.	A defendant will argue
i.	My product does not infringe your patent, and
ii.	If it does, your patent is invalid
(1)	59. The defendant, in any action for infringement of a patent may plead as matter of defence any fact or default which by this Act or by law renders the patent void, and the court shall take cognizance of that pleading and of the relevant facts and decide accordingly.
17.	Form and Interpretation
a.	Construction & Infringement
b.	The alleged infringing device is not compared with the patentee’s device – it is compared with the patent
c.	The construction of the patent is therefore crucial to the issue of infringement
18.	Remedies
a.	Injunction is routine after finding of infringement
i.	But see eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (U.S. 2006)
b.	Damages post-grant
c.	Reasonable compensation for pre-grant “infringement”
d.	Accounting of Profits
e.	Interlocutory injunction
i.	Difficult to obtain because it is difficult to show irreparable harm when the remedy sought is monetary