Agenda for 3rd Class

1
Agenda for 3rd Class

• Patentable Subject Matter
• Homework questions
• Novelty
• Priority
• Statutory Bars

2
Assignment for Next Class

• Distributed at end of class
• Posted to website later today

3
Administrative Stuff I

• Sign in sheets
• Panel list -- web
• Slide handouts
• Name plates
• Paper and participation numbers
• Random calling

4
Patentable Subject Matter Review

• Products. Anything made by a human
• Processes.
• Ways of making things or doing business
• Improvements
• Blocking patents

5
Homework Questions

• 1) Was this case (Merck) primarily about a
  process patent or a product patent?
  
• 2) Suppose X were the first to identify the
  gene for the production of vitamin B12. Could X
  get a patent on that gene? In answering this
  question please be sure to address both issues of
  legal doctrine (statute(s), case(s), etc.) and
  policy (the economic rationale for IP and other
  considerations you think might be relevant).
• 3) Suppose X got a patent on the gene for the
  production of vitamin B12 and inserted that gene
  into a bacterium. Could X get a patent on the
  bacterium as well? In answering this question
  please be sure to address both issues of legal
  doctrine (statute(s), case(s), etc.) and policy
  (the economic rationale for IP and other
  considerations you think might be relevant).

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• 4) If Mercks vitamin B12 patent had not already
  expired and were otherwise valid, would X need
  permission from Merck to produce vitamin B12
  using the genetically engineered bacterium
  described in question 3?

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• 5) The Gates Foundation has decided that
  eradicating malaria is its highest priority. It
  has offered a 1 billion prize for a malaria
  vaccine. The condition of the prize is that the
  winner assign (e.g. transfer) its patent rights
  in the vaccine to the Gates foundation. There are
  1.5 billion people who would benefit from a
  malaria vaccine. 500 million would pay 100 for
  the vaccine, 500 million would pay 10 for the
  vaccine, and 500 million are so poor that they
  would pay only 1 for the vaccine. Dr. Y
  successfully developed a malaria vaccine. The
  Gates foundation paid Dr. Y the 1 billion prize.
  The malaria vaccine costs 5 per patient to
  produce and administer.
• a) If the Gates Foundation were a profit
  maximizing firm, what price would it charge for
  the vaccine? That is, what price would maximize
  its profits? 5 10? 100? some other price?
• b) If the Gates Foundation were attempting
  solely to maximize social welfare as measured by
  consumers willingness to pay, what price would
  it charge for the vaccine? That is, what price
  would maximize the number of people receiving the
  vaccine times the average difference between
  willingness to pay and cost to produce and
  administer?
• c) At what price would you advise the Gates
  Foundation to distribute the vaccine?
  

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Important Subject Matter Cases

• Diamond v Chakrabarty, 447 US 303 (1980)
• Genetically engineered bacteria patentable
• In re Allapat, 33 F.3d 1526 (Fed. Cir. 1994)
• Computer programs patentable
• State Street Bank Trust, 149 F3d 1368 (Fed.
  Cir. 1998)
  
• Business methods patentable

9
Novelty

• 35 U.S.C. 102(a). Conditions for patentability
  novelty and loss of right to patent
  
• A person shall be entitled to a patent unless--
• (a) the invention was known or used by others in
  this country, or patented or described in a
  printed publication in this or a foreign country,
  before the invention thereof by the applicant for
  patent
• Novelty judged at time of invention
• Not time of patent application
• Note discrimination against foreign inventors
• Knowledge or use by someone in a foreign country
  does not rule out novelty
  

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Prior Art

• Look to prior art to determine what known or
  use
  
• Prior art includes
• Patent applications
• Journals
• Things on sale or in public use
• If prior art is written, and person skilled in
  relevant art could duplicate the product or
  process, then not novel
  
• If prior art is actual product or process, and
  would infringe patent, if patent were granted,
  then not novel
  

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Novelty Hypothetical

• 1/1/2000. X invents
• 3/1/2000. Y invents and uses
• 5/1/2000. X applies for patent
• Does X meet the novelty requirement?

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Priority

• Priority is closely related to novelty
• Who gets patent, if two inventors apply for the
  same invention
  
• US -- First to invent
• Rest of world first to file
• Modified hypothetical
• 1/1/2000. X invents
• 3/1/2000. Y invents and uses
• 4/1/2000. Y applies for patent
• 5/1/2000. X applies for patent
• Who gets the patent?
• Priority litigated in interference proceedings
  before PTO
  
• Adversarial, unlike application procedure (which
  is ex parte)
  

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What Does It Mean to Invent First?

• Priority determined primarily by date of
  conception
  
• But person 2nd to conceive may prevail if
• reduced to practice first, and
• person who was first to conceive was not
  diligent
  
• 35 USC 102(g)
• Conception
• Mental formulation, complete enough that another,
  skilled in art, could reduce to practice w/o
  undue experimentation
  
• Reduction to practice (RTP)
• Building and testing invention
• actual reduction to practice
• Filing patent application
• constructive reduction to practice

14
Strategy

• Why not always file as soon as conceive, so as to
  establish constructive reduction to practice and
  thus priority?
  

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Statutory Bars

• 35 U.S.C. 102. Conditions for patentability
  novelty and loss of right to patent
  
• A person shall be entitled to a patent unless--
• (b) the invention was patented or described in a
  printed publication in this or a foreign country
  or in public use or on sale in this country, more
  than one year prior to the date of the
  application for patent in the United States
• 3 principal bars
• Publication bar
• Public use bar
• On sale bar

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Novelty v. Statutory Bars

• Novelty makes sure applicant is first
• Statutory bars make sure that applicant has not
  unduly delayed filing for patent
  
• Why care?
• Novelty is only about activities of others
• Statutory bars primarily about applicants own
  activities
  
• Novelty is judged at time of the invention
• Statutory bars judge one year prior to patent
  application
  
• Novelty -- 35 USC 102(a)
• Statutory bars 35 USC 102(b)