- Limited Idea Protection
- No Rts Against World But Rel.
- Offeror v. Offeree
- Four C/A's
- Express K
- Agmt in words that if use, will give compensation
- Implied K
- Consent by conduct by accepting idea & use knowing tendered
- Blind submissiont w/o opp. 2 reject isn't implied K
- Q -K
- Implied in law not fact
- Recov. rare but can if lots of novelty & concrete + spec.
- Confidential Rel.
- Can B basis 4 inferring implied K
- Sep C/A arise out of exp. / implied K where D consent 2 such
- Imp. when D discl's 2 3rd party & 4 tort C/A
- Novelty & Concrete Reqt's
- Most Jxn's Req. 4
- Metes & bounds
- Cert. that legit. 2 protect
- Novelty of Idea v. Doing Idea (Murray v. NBC)
- Need 4 All C/A's
- For exp. K, min. jxn allow 2 K away novelty
- Const'al Policy
- Promote prog. of useful art
- Strongest protection in IP 2 protect against indep. creation
- Five Substantive Reqt's
- P'able Subj. Matter
- Min. Reqt
- By §115, only orig'al invetor apply but he can assign
- Take oath saying orig'al
- Useful: §101 Reqt
- Min. Limit 2 Work in Pract'al Way
- P'able Subj. Matter
- P Act §101
- Utility P 4 / improvement of subj. matter
- Process: series of acts 2 reach result
- Machine: collection of parts & range 2 result
- Article of mfgr: prod. of articles 4 use from raw / prep'ed
- Composition of matter: combo of elements of matter mixed w/o
chemical bonding w/sig'ly dif. prop. from components' prop's
- Idea / Law of Nat. UnP'able
- Living Org's
- Plants can B P'ed & not infring. 2 eat / grow plants
- Gen'ly reluctant but P'able 4 new genetically engineered stuff
- Novelty & Stt Bar: §102
- Conceive when have definite compl. idea of operation
- Reduce 2 pract. (R/P) actually / constructively by making
article / machine or by filing 2 P detailing in way knowledgeable
person can construct
- Presume R/P @ X of applic.
- New / dif. so applic. is 1st 4 comm'l use
- Bars P if prior art same as invention
- Can anticipate if invented, publ'ed, / in for. applic.
- Prior art must have all that later invention has
- Can P unless invention made before by another w/o abandon,
suppressed, / concealed in US (§102)g)
- Abandon if orig. inventor vol'ly term'ed effort 2 exploit
- Suppress / conceal if no pub. use but can have non-informing
- Rsbl diligence matter if 1st person 2 conceive & R/P later
- Need diligence from 2nd person's R/P date until 1st person's
- Excuse inactivity when it's common everyday prob. & hardship
but not comm'l attempts
- Interference paradox
- 1st Invention: §102)a Bars If Prior Invention
- Bars if
- Known (Applic. of Borst) in US
- Full discl. (not R/P) of invention so enabled skilled person
in art 2 put it in pract.
- Accessible 2 pub.
- Used in US
- R /P
- Accessible 2 pub. so not aff'ly concealed
- Subj. of P in world
- Revealed in printed material in world
- Date of invention imp.
- Activities of others focus
- Stt. Bar: §102)b
- Applic. / filing date imp.
- Activities of all, incl'ing applicant's
- One yr. S/L triggered
- Discl in P / printed publ.
- Or if invention pub'ly used in US
- Pub. use must B free & unrestricted
- Or If invention sold in US
- Sale 4 actually created invention, not P rt.
- Sale not need R/P but relev.
- Experimental use exception which excl's testing mkt
- Policy 4 stt. bar
- Not take away from pub. which thinks it's freely available
- File promptly 4 discl
- Prevent effective monopoly
- Grace 4 marginal claims 2 B perfected
- Nonobvious: §103
- Beyond Novelty
- Add something sig. 2 prior art
- Fact Consid's 4 Nonobvious
- Prior art 4 scope & content
- Dif. btwn prior art & invention
- Level of ord. skill in pertinent art.2 dec. if dif. obvious
- 2ndary Consid. (Graham v. John Deere, Fed. Circ's)
- Comm'l success
- Long sought need
- Failure of others 2 come up w/it
- Movement of persons skilled in art in dif. dir.
- Skepticism on expert's part regarding inventor's approach
- Recog. & acceptance of P by competitors who take license
- D copied invention instead of alt's
- Obvious / Novel by Prior Art
- P becomes part of prior art when file, not issued
- Det'ing Obviousness
- For §103, only bars if invention @ X of it is obvious
- Read obviousness into §102)b which det's if qualifies
4 P (Application of Foster Case)
- Discl. Reqt: §112
- Enabling Discl.
- Full discl. of best mode of pract'ing invention so would enable
any person of avg in art 2 duplicate
- If no enabling discl, no filing date
- Int'l Consid.
- US has 1st 2 invent where as others have 1st 2 file
- Others not have 1 yr grace per., best mode reqt, / consid.
secret prior art
- Scope of protection dif. in dev'ing v. dev'ed
- Paris Convention: Nat'l Treatment
- If file, then has 1 yr 2 file in another country w/priority
from 1st date
- P Coop. Treaty
- GATT & TRIPs
- Term & infring. in US changed 2 meet this reqt
- P'able subj matter 4 any invention, prod., / process in all
- Can excl invention whose comm'l exploitation threatens pub.
order morality incl'ing protect human, animal, plant life, health,
/ avoid harm 2 env.
- Can excl diagnostic, theraputic / surgical method of treatment
of human / animals
- Can not protect plants / animals other than micro-org. / bio.
process 4 prod. of plants & animals
- Applic. Same As Issued
- P Claims
- Entitle 2 excl. rts / legal monopoly in set metes & bounds
- Each claim 1 sentence
- Disting. from prev. invention
- Broad 1st claim then narrower claims
- Indep. claims so 1 invalid claim not kill others
- P Prosec.
- P attys draft claims
- Applic. @ PTO examined by P examiner
- 2nd letter is final rejection unless new issues
- Even after P issued, P'ee has 2 enforce infring.
- P Term: 20 Yrs From Applic. Date & Begins When P Issued
P Infring.: §271)a
- P Owners Excl Rts During P Term
- Offer 2 sell
- Import 2 US
- Use Infring.
- Gen'ly Go After Mfgr / Retail
- Exhaustion of Rt Doc.
- Once sell P'ed stuff, buyer can use / resell b/c P owner parted
- Can't reconstruct but can repair
- Kinds of Infring.
- Literal Infring.
- Claims read on accused device / process if accused device
/ process has all elements of claims
- Jud. Doc. of Equiv.
- Policies high protection v. cert. of P boundary
- If little change, then still infring. if equiv.
- If do subst'ly same fn, in same way, & same result, then
- Can't get broader scope / rts in prior art
- Two approaches
- Use all element so if all elements there, see if any element
not lit'ly cov'ed is cov'ed by equiv.
- Invention as whole so see if in hindsight would've claimed
- Substantiability of dif's btwn claimed & accused stand.
- Doc. of Prosec. History Estoppel
- If give up something 2 get P, can't later try 2 claim what's
- Any change 4 prosec., limit doc. of equiv.
- Reverse Doc. of Equiv.
- Even if lit. infring., not infring. if P'ees claim 2 broad
but very rare
- Changed in tech. so perf. fn, way, / result dif'ly then use
- Reluctant 4 prelim. injunction but perm. injunction 4 final
- Damages §284
- Adeq. 2 Compensate 4 Infring.
- Gen'ly lost profit b/c prove but 4 infring., would've had
- Floor of rsbl royalty w/int. & cost
- Amt up 2 3X's
- Atty Fees §285
- If Losing D Wilful / Either Party Acted in Bad Faith
This material is copyrighted by the author. Use of this material
for profit is strictly prohibited without written consent
Ms. Haeji Hong
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