Idea Protection

State Law

  1. Limited Idea Protection
    1. No Rts Against World But Rel.
    2. Offeror v. Offeree
  2. Four C/A's
    1. Express K
      1. Agmt in words that if use, will give compensation
    2. Implied K
      1. Consent by conduct by accepting idea & use knowing tendered 4 value
      2. Blind submissiont w/o opp. 2 reject isn't implied K
    3. Q -K
      1. Implied in law not fact
      2. Recov. rare but can if lots of novelty & concrete + spec. elements
    4. Confidential Rel.
      1. Can B basis 4 inferring implied K
      2. Sep C/A arise out of exp. / implied K where D consent 2 such rel.
      3. Imp. when D discl's 2 3rd party & 4 tort C/A
  3. Novelty & Concrete Reqt's
    1. Most Jxn's Req. 4
      1. Metes & bounds
      2. Cert. that legit. 2 protect
    2. Novelty of Idea v. Doing Idea (Murray v. NBC)
    3. Need 4 All C/A's
      1. For exp. K, min. jxn allow 2 K away novelty

Patent (P)

Utility P

  1. Const'al Policy
    1. Promote prog. of useful art
    2. Strongest protection in IP 2 protect against indep. creation
  2. Five Substantive Reqt's
    1. Original
    2. Useful
    3. P'able Subj. Matter
    4. Novel
    5. Nonobvious
  3. Original
    1. Min. Reqt
      1. By 115, only orig'al invetor apply but he can assign
      2. Take oath saying orig'al
  4. Useful: 101 Reqt
    1. Min. Limit 2 Work in Pract'al Way
  5. P'able Subj. Matter
    1. P Act 101
      1. Utility P 4 / improvement of subj. matter
    2. Types
      1. Process: series of acts 2 reach result
      2. Machine: collection of parts & range 2 result
      3. Article of mfgr: prod. of articles 4 use from raw / prep'ed materials
      4. Composition of matter: combo of elements of matter mixed w/o chemical bonding w/sig'ly dif. prop. from components' prop's
    3. Idea / Law of Nat. UnP'able
    4. Living Org's
      1. Plants can B P'ed & not infring. 2 eat / grow plants
      2. Gen'ly reluctant but P'able 4 new genetically engineered stuff (Chakrabarty)
  6. Novelty & Stt Bar: 102
    1. Invention
      1. Conceive when have definite compl. idea of operation
      2. Reduce 2 pract. (R/P) actually / constructively by making article / machine or by filing 2 P detailing in way knowledgeable person can construct
        1. Presume R/P @ X of applic.
    2. Novelty
      1. New / dif. so applic. is 1st 4 comm'l use
    3. Anticipation
      1. Bars P if prior art same as invention
      2. Can anticipate if invented, publ'ed, / in for. applic.
      3. Prior art must have all that later invention has
    4. Priority
      1. Can P unless invention made before by another w/o abandon, suppressed, / concealed in US (102)g)
        1. Abandon if orig. inventor vol'ly term'ed effort 2 exploit invention
        2. Suppress / conceal if no pub. use but can have non-informing pub. use
      2. Rsbl diligence matter if 1st person 2 conceive & R/P later
        1. Need diligence from 2nd person's R/P date until 1st person's R/P
        2. Excuse inactivity when it's common everyday prob. & hardship but not comm'l attempts
        3. Interference paradox
    5. 1st Invention: 102)a Bars If Prior Invention
      1. Bars if
        1. Known (Applic. of Borst) in US
          1. Full discl. (not R/P) of invention so enabled skilled person in art 2 put it in pract.
          2. Accessible 2 pub.
        2. Used in US
          1. R /P
          2. Accessible 2 pub. so not aff'ly concealed
        3. Subj. of P in world
        4. Revealed in printed material in world
      2. Date of invention imp.
      3. Activities of others focus
    6. Stt. Bar: 102)b
      1. Applic. / filing date imp.
      2. Activities of all, incl'ing applicant's
      3. One yr. S/L triggered
        1. Discl in P / printed publ.
        2. Or if invention pub'ly used in US
          1. Pub. use must B free & unrestricted
        3. Or If invention sold in US
          1. Sale 4 actually created invention, not P rt.
          2. Sale not need R/P but relev.
          3. Experimental use exception which excl's testing mkt
      4. Policy 4 stt. bar
        1. Not take away from pub. which thinks it's freely available
        2. File promptly 4 discl
        3. Prevent effective monopoly
        4. Grace 4 marginal claims 2 B perfected
  7. Nonobvious: 103
    1. Beyond Novelty
      1. Add something sig. 2 prior art
    2. Fact Consid's 4 Nonobvious
      1. Prior art 4 scope & content
      2. Dif. btwn prior art & invention
      3. Level of ord. skill in pertinent art.2 dec. if dif. obvious
    3. 2ndary Consid. (Graham v. John Deere, Fed. Circ's)
      1. Comm'l success
      2. Long sought need
      3. Failure of others 2 come up w/it
      4. Movement of persons skilled in art in dif. dir.
      5. Skepticism on expert's part regarding inventor's approach
      6. Recog. & acceptance of P by competitors who take license
      7. D copied invention instead of alt's
    4. Obvious / Novel by Prior Art
      1. P becomes part of prior art when file, not issued
    5. Det'ing Obviousness
      1. For 103, only bars if invention @ X of it is obvious
      2. Read obviousness into 102)b which det's if qualifies 4 P (Application of Foster Case)
  8. Discl. Reqt: 112
    1. Enabling Discl.
      1. Full discl. of best mode of pract'ing invention so would enable any person of avg in art 2 duplicate
      2. If no enabling discl, no filing date
  9. Int'l Consid.
    1. Dif's
      1. US has 1st 2 invent where as others have 1st 2 file
      2. Others not have 1 yr grace per., best mode reqt, / consid. secret prior art
      3. Scope of protection dif. in dev'ing v. dev'ed
    2. Paris Convention: Nat'l Treatment
      1. If file, then has 1 yr 2 file in another country w/priority from 1st date
    3. P Coop. Treaty
    4. GATT & TRIPs
      1. Term & infring. in US changed 2 meet this reqt
      2. P'able subj matter 4 any invention, prod., / process in all tech. but
        1. Can excl invention whose comm'l exploitation threatens pub. order morality incl'ing protect human, animal, plant life, health, / avoid harm 2 env.
        2. Can excl diagnostic, theraputic / surgical method of treatment of human / animals
        3. Can not protect plants / animals other than micro-org. / bio. process 4 prod. of plants & animals

Applic. Process

  1. Applic. Same As Issued
    1. P Claims
      1. Entitle 2 excl. rts / legal monopoly in set metes & bounds
      2. Each claim 1 sentence
      3. Disting. from prev. invention
      4. Broad 1st claim then narrower claims
      5. Indep. claims so 1 invalid claim not kill others
    2. P Prosec.
      1. P attys draft claims
      2. Applic. @ PTO examined by P examiner
      3. 2nd letter is final rejection unless new issues
      4. Even after P issued, P'ee has 2 enforce infring.
    3. P Term: 20 Yrs From Applic. Date & Begins When P Issued

P Infring.: 271)a

  1. P Owners Excl Rts During P Term
    1. Make
    2. Offer
    3. Use
    4. Offer 2 sell
    5. Import 2 US
  2. Use Infring.
    1. Gen'ly Go After Mfgr / Retail
    2. Exhaustion of Rt Doc.
      1. Once sell P'ed stuff, buyer can use / resell b/c P owner parted title
      2. Can't reconstruct but can repair
  3. Kinds of Infring.
    1. Literal Infring.
      1. Claims read on accused device / process if accused device / process has all elements of claims
    2. Jud. Doc. of Equiv.
      1. Policies high protection v. cert. of P boundary
      2. If little change, then still infring. if equiv.
      3. If do subst'ly same fn, in same way, & same result, then equiv. (Graver)
      4. Can't get broader scope / rts in prior art
      5. Two approaches
        1. Use all element so if all elements there, see if any element not lit'ly cov'ed is cov'ed by equiv.
        2. Invention as whole so see if in hindsight would've claimed
      6. Substantiability of dif's btwn claimed & accused stand.
    3. Doc. of Prosec. History Estoppel
      1. If give up something 2 get P, can't later try 2 claim what's given up
      2. Any change 4 prosec., limit doc. of equiv.
    4. Reverse Doc. of Equiv.
      1. Even if lit. infring., not infring. if P'ees claim 2 broad but very rare
      2. Changed in tech. so perf. fn, way, / result dif'ly then use this doc.

Remedies

  1. Injunction
    1. Reluctant 4 prelim. injunction but perm. injunction 4 final rsln
  2. Damages 284
    1. Adeq. 2 Compensate 4 Infring.
      1. Gen'ly lost profit b/c prove but 4 infring., would've had sale
      2. Floor of rsbl royalty w/int. & cost
      3. Amt up 2 3X's
  3. Atty Fees 285
    1. 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 of author.

12/7/1996

Ms. Haeji Hong

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