PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 1 Patent Engineering IEOR 190G CET:...

PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 1

Patent EngineeringIEOR 190G

CET: Center for Entrepreneurship &Technology

Week 7

Dr. Tal Lavian(408) 209-9112

[email protected]

321 HavilandMondays 4:00-6:00

2

Claims & Elements I

• Patent must contain at least one claim• Usually contains several claims

– Claims are numbered and clearly distinct• Infringement of single claim is sufficient for infringement

– Need not infringe two or all claims• Each claim usually contains several elements

– Infringement requires correspondence between each element of a claim and an element of the allegedly infringing product or process

– In literal infringement, the correspondence is exact• Accused device or process has element exactly matching

description in a patent claim– In doctrine of equivalents infringement, correspondence is not

exact, but elements are “similar” and “equivalent”• Elements in patent and accused device or process perform the

same function in the same way to achieve the same result

PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness

3

CLAIMS

Claims define the legal effect of the patent!

Learn a new VERB: READ ON- if a claim READS ON the prior art,

the claim is INVALID

- if a claim READS ON an accused device, the device INFRINGES the claim


4

Liability ≈ Validity & Infringement

In ANY IP case (copyright, trademark, trade secret), the liability questions are:

IS IT VALID?IS IT INFRINGED?

The “it” is will vary, of course.What makes an “it” valid is different, too.So: What is the “it” in a patent case?


7

Depends on what is in the PRIOR ART.How do those 2 differ?

1. HOW MUCH ART?2. What other things matter, besides the art and

what it DISCLOSES?

Anticipation and Obviousness


8


1. How much art?Anticipation: A single piece of prior art

is ON ALL parts. The claim READS ON this single reference.

Obviousness: Usually more than one reference, but could be one reference PLUS the knowledge of the “person of ordinary skill in the art”


Week 7: Anticipation and Obviousness

THE PRIOR ART SEARCH

• A thorough search should also include both patent and non-patent references such as journals and other publications.

• The Internet is an excellent source for prior art information.

• A patent search is not an infringement search.

PatentEng-Berkeley-Lavian 9

Week 7: Anticipation and Obviousness

THE PRIOR ART SEARCH (cont’d)

• A patent search is a search of public patent records of at least the U. S. Patent Office for disclosures pertinent to the patentability of the invention.

• The search can be conducted in Washington in the search room of the U. S. Patent Office, or by means of electronic databases (such as the patent database available at www.uspto.gov).

PatentEng-Berkeley-Lavian 10

Nonobvious to Whom?

• A patent will NOT be issued if a person having ordinary skill in the field of the invention would consider the invention obvious at the time of creation

• The law considers a person having ordinary skill in the art to be a worker in the field of the invention who:– Has ordinary skill– Is totally knowledgeable about all the prior art in his or her

field• Pure Fantasy, but no other realistic way to determine

nonobviousness– The PTO creates a hypothetical person and tries to weigh

the obviousness of the invention against the knowledge this hypothetical person would possess


Credit given to Attorneys David Pressman & Richard Stim, Nolo’s Patents for Beginners, for much of the information

12


2. What else matters besides <Prior Art>?Anticipation: NOTHING. Except that the single

piece of Prior Art must ENABLE at least as well as the patent does.

Obviousness: LOTS.The PRIMARY CONSIDERATIONS.

(really not much beyond the p.a., but there’s a formula for them, from the statute and from court decisions)

The SECONDARY CONSIDERATIONS

Guess which one Accused Infringers prefer to use to challenge a patent?What about Patent Owners?


13

SECONDARY CONSIDERATIONS(1) The invention's commercial success(2) Long felt but unresolved needs(3) The previous failure of others(4) Skepticism by experts(5) Praise by others(6) Teaching away by others(7) Solves an unrecognized problem(8) Solves an insoluble problem(9) Copying of the invention by competitors (10) Omission of Element(11) Crowded Art(12) Not suggested Modification(13) Unappreciated Advantage

Guess which one Accused Infringers prefer to use to challenge a patent?

What about Patent Owners?


14

Combination InventionsInventions that combine two or more elementsalready known in prior art can still be patentable,provided the combination is nonobvious:

(1) Synergism (2 + 2 = 5)(2) Combination Unsuggested(3) Impossible to Combine(4) Different Combination(5) Prior-Art References Would Not Operate in

Combination(6) References from a Different Field



Examples of Obviousness• Nonobvious: Slight Physical Changes – Dramatic Result

– Sometimes, a very slight change in shape, slope, size, or material can produce a patentable invention that operates entirely differently and produces totally unexpected results

• Nonobvious: New Use Inventions– Do not involve any physical change to old invention– Must be different use of known product or process and

produce new, unexpected results• Obvious: Different Element, Similar Function

– Courts have held that substituting a different, but similarly functioning, element for one of the elements in a known combination creates a novel invention but an obvious one.



Examples of Obviousness• Obvious: Old Concept, New Form

– The PTO will consider as obvious the mere carrying forward of an old concept, or a change in form and degree, without a new result (notches on inner rim of steering wheel for better grip, obvious because of medieval sword handles)

• Obvious: Duplication of Parts– Usually consider the duplication of a part as obvious

unless new results can be observed• Obvious: Portability, Size, Speed, and Integration

– Making devices portable, making parts smaller or larger, faster or slower, making elements adjustable, parts integral, separable, etc. will be considered obvious unless new, unexpected results can be shown.



PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 1 Patent Engineering IEOR 190G CET:...

Documents

Transcript of PatentEng-Berkeley-Lavian Week 7: Anticipation and Obviousness 1 Patent Engineering IEOR 190G CET:...