The Patent Document II

The Patent Document IIThe Patent Document II

Class Notes: January 23, 2003Class Notes: January 23, 2003

Law 677 | Patent Law | Spring 2003Law 677 | Patent Law | Spring 2003

Professor WagnerProfessor Wagner

1/23/031/23/03 22Law 677 | Spring 2003Law 677 | Spring 2003

Today’s AgendaToday’s Agenda

1. The Best Mode Requirement

2. Looking at disclosure & complex

technology

3. Inventorship


The Standards for PatentabilityThe Standards for Patentability

A valid patent must be . . .A valid patent must be . . .

Fully and appropriately described (§ 112)Fully and appropriately described (§ 112)

In compliance with statutory bars (§ 102)

Novel (§ 102)

Nonobvious (§ 103)

The work of the inventors (§ 116)

Useful (§ 101)

Within the appropriate subject matter (§

101)


The Best Mode RequirementThe Best Mode Requirement

35 U.S.C. § 112. - Specification35 U.S.C. § 112. - Specification

The specification shall contain a written The specification shall contain a written description of the invention, and of the description of the invention, and of the manner and process of making and using it, in manner and process of making and using it, in such full, clear, concise, and exact terms as to such full, clear, concise, and exact terms as to enable any person skilled in the art to which it enable any person skilled in the art to which it pertains, or with which it is most nearly pertains, or with which it is most nearly connected, to make and use the same, and connected, to make and use the same, and shall set forth the best mode contemplated by shall set forth the best mode contemplated by the inventor of carrying out his inventionthe inventor of carrying out his invention. . . .. . . .



The Components of the Best Mode The Components of the Best Mode AnalysisAnalysis

1.1. Subjective component: Did the Subjective component: Did the inventor have a best mode of making inventor have a best mode of making the invention?the invention?

2.2. Objective component: If #1 is true, Objective component: If #1 is true, then consider whether the disclosure is then consider whether the disclosure is sufficient?sufficient?• What is the standard for disclosure quality?



Glaxo v Novopharm (Fed. Cir. 1995) (Rich, Glaxo v Novopharm (Fed. Cir. 1995) (Rich, J.)J.)

o Subjective component?o Objective component?

• Why allow Glaxo to play ‘shell games’?



Great Northern v Henry Molded Products Great Northern v Henry Molded Products (Fed. Cir. 1996) (Clevenger, J.)(Fed. Cir. 1996) (Clevenger, J.)• H’s ‘314 patent does not disclose ‘diamond’

indentations in a molded pulp roll support• Consider: H’s argument

o Why not require disclosure of “production details”? (What are they?)

o Why not require disclosure of “routine details”?



Some Best Mode HypotheticalsSome Best Mode Hypotheticals

1.1. You (the inventor) select a mode by chance or You (the inventor) select a mode by chance or convenience. Must you disclose?convenience. Must you disclose?

2.2. You select a mode because it makes the You select a mode because it makes the invention easier/cheaper to produce. Must you invention easier/cheaper to produce. Must you disclose?disclose?

3.3. Assume you mistakenly or inadvertently fail to Assume you mistakenly or inadvertently fail to disclose the best mode. Problem?disclose the best mode. Problem?

4.4. Assume you work on a research team: Assume you work on a research team: a) A (noninventor) colleague determines a better mode

than you do, and tells you before filing.b) A (noninventor) colleague determines a better mode

than you do, but does not tell you before filing.


The Best Mode RequirementThe Best Mode RequirementKey Issue: Best Mode vs. the Claim LanguageKey Issue: Best Mode vs. the Claim Language

1.1. Engel v LockformerEngel v Lockformer: method of crimping : method of crimping corners for invention of corner attachments corners for invention of corner attachments for ductsfor ducts• Unclaimed• No best mode violation

2.2. Great NorthernGreat Northern: diamond-shaped indents: diamond-shaped indents• Unclaimed• Best mode violation

3.3. Northern TelecomNorthern Telecom: way of operating method : way of operating method to get fine lines (invention: silicon etching)to get fine lines (invention: silicon etching)• Unclaimed• No best mode violation


Disclosure & Complex Disclosure & Complex TechnologyTechnology

Northern Telecom v DatapointNorthern Telecom v Datapoint (Fed Cir 1990) (pc) (Fed Cir 1990) (pc)• Why was the cassette tape issue easy for Best Mode?

(Consider: Newman’s dissent.)• The invention requires software to run. Does that

software need to be disclosed?

Fonar v General ElectricFonar v General Electric (Fed Cir 1997) (Lourie, J.) (Fed Cir 1997) (Lourie, J.)• Note the ‘general rule’: this has been suggested to be

the death of the software industry. Agree? (Should the court have stated it another way?)

• Note that Lourie wrote most of the biotech/chemical written description cases. Anything ironic about his views here? (Note that Judge Lourie has a PhD in Chemistry.)


InventorshipInventorship

35 U.S.C. § 116. - Inventors35 U.S.C. § 116. - InventorsWhen an invention is made by two or more When an invention is made by two or more persons jointly, they shall apply for patent persons jointly, they shall apply for patent jointly and each make the required oath, jointly and each make the required oath, except as otherwise provided in this title. except as otherwise provided in this title. Inventors may apply for a patent jointly even Inventors may apply for a patent jointly even thoughthough(1) they did not physically work together or at (1) they did not physically work together or at the same time,the same time,(2) each did not make the same type or (2) each did not make the same type or amount of contribution, oramount of contribution, or(3) each did not make a contribution to the (3) each did not make a contribution to the subject matter of every claim of the patent.subject matter of every claim of the patent.


InventorshipInventorship

Hypo: Patent ‘123 has 120 claims. A is Hypo: Patent ‘123 has 120 claims. A is the sole worker on 119 claims; B the sole worker on 119 claims; B suggests an improvement that makes it suggests an improvement that makes it as Claim 120.as Claim 120.

• Who owns the patent?

• B grants an exclusive license to Company X to the ‘123 patent, and keeps the $$ for herself. Problem?


InventorshipInventorshipHypo 2: Patent ‘123 was filed without naming Hypo 2: Patent ‘123 was filed without naming

Inventor B.Inventor B.

1. What needs to happen? How does it work?o 35 USC 116 (PTO can fix); 35 USC 256 (Court can fix)

2. Company X, charged with infringement, gets a license from B. What happens? See Ethicon, p. 486.

3. Assume A deliberately filed without B’s knowledge. What happens?

35 USC 116/256:… whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Commissioner may permit the application to be amended accordingly, under such terms as he prescribes.


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