Patentability Requirements
(patent law)
Chen JingFung (Grace)
@csie.ntut.edu.tw 2012/03/22
Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
Req.1 Statutory
class
Req.2 Utility
Req.3 Novelty
Outline
• 4 legal requirements
– Req. 1: Statutory class
• Talk critical lawsuits
• 5 classes: process, machine, manufacture, composition, new use
– Req. 2: Utility
• turn the whimsical case to patentability
– Req.3: Novelty
• Prior art
Patentability – 4 legal requirements
4 legal req. Law
section Criteria
Unobiousness 103 Can provide one or more new & unexpected results (?) Can make of innovation in the specific technology (?)
Novelty 102 new physical feature (?) new combination of separate old feature (?) new use of an old feature (?)
Utility 101 Can be regarded as a useful one (?)
Statutory class 101
5 classifications
process machine manufacture composition
New use
Patent law 35 USC 101 or 35 USC 102 or 35 USC 103
Requirement #1:
a statutory class[CS] - lawsuits
Cri
tica
l law
suit
Chakrabarty case (1980)
• Diamond v. Chakrabarty, 447 U.S. 303,1980 (BIO)
• Milestone: anything under sun that is made by man
Diehr case (1981)
• Diamond v. Diehr, 450 U.S. 175, 1981
• 1st software case – successful case
• Milestone: can protect the step for using the formula
Bilski case (2010)
• Bilski v. Kappos, 130 S.Ct. 3218 @ Supreme Court
• Start with 08/833892 was rejected by examiner
• 2010 – re Bilski case (10/400846, 10/108089) was also gotten “Abandoned”
• Parker v. Flook 437 U.S. 584, 1978 (wiki) • CCPA -> Supreme Court • Use of a math algorithm is non-patentability
Flook case (1978)
Statutory Class [SC] (1) –
process (or method)
• The standard for “process or method” patentability – Define originally an invention that produced a “useful,
concrete, & tangible”
– After Bilski case (2010/6/28)
• 4 judges said Bilski’s invention too abstract to patent – even have held that all business methods, even if tied to hardware,
should not be patentable
• Affect to determine patent (PTO & CAFC) on subject-matter patentability – Software, diagnostic medical techniques, linear programming, data
compression, and manipulation of digital signals
• Make sure your describe & claim it either – Is tied to a particular machine or apparatus, or – Transforms a particular article into a different state or thing
Non-patentable
unless hardware is substantially
involved
Pass Machine or Transformation Test
Statutory Class [SC] (2) –
Machines
• Machines are devices or things used for accomplishing a task – involve some activity or
motion that’s performed by working parts
– Emphasis on hardware >> the activity per se. • Can classify machines into 2
categories: conventional & software
US7651445, 2010, title: Elliptical trainer
Statutory Class [SC] (3) –
conventional machines
7
sewage treatment plants
Ref: want-car.chinatimes.com
US5815526 (1998), Signal comprising binary spreading-code sequences
Actual hardware and/or as a process for
manipulating an electrical signal or
weaving fabrics
ref: fueleconomy.gov
Statutory Class [SC] (4) –
software machines
• How to make software to be tied with a machine?
– Most software are claimed as processes, also be claimed as machine
– As a process would be claimed:
• measuring an object to obtain a set of measurements, and
• controlling a milling machine according to the set of measurements.
– As a machine would be claimed:
• means [or an apparatus] for measuring an object to obtain a set of measurements, and
• means [or an apparatus] for adjusting a milling machine according to the set of measurements.
[email protected] 8 Ref: wiki
CNC (Computer Numerical Control) machine cutting, ttp://www.youtube.com/watch?v=u2T2geQoSx8&feature=related
Statutory Class [SC] (5) –
Manufactures - US6092278
Prior art
US6092278, 2000, Method for manufacturing a pencil-shaped core
pencil cores have multi-size in one pencil
showing a die used in the manufacture of
pencil cores according to the
present
a top view of the strip as blanked at three of
the scrap area blanking stations showing changing spacing of blanked
scrap regions
US6092278, 2000, Method for manufacturing a pencil-shaped core
Status: Patent Expired Due to NonPayment of Maintenance Fees Under 37 CFR 1.362
Statutory Class [SC] (6) –
Manufactures - US6092278
Statutory Class [SC] (7) –
Compositions of Matter
• Compositions of matter are items – as chemical compositions,
conglomerates (rock), aggregates …
– Can form as Solid, Liquid or Gas
– Recently, • genetically altered plants,
microbes, genes, and nonhuman animals have been allowed under this category.
US5246717 (1993) Eggs compatible with cholesterol-reducing diet and method of producing the same
Statutory Class [SC] (8) –
New use of any of the above
• A new-use invention is actually a new and unobvious process or method for using an old and known invention – but the discovery of a new use for old-thing
• For example, “Venetian blind cleaner can also be used as a seed planter” – Venetian blind cleaner (already patented) can
not be patented • you didn’t invent it!!
– But can get a patent on the specific new use (seed planting) of the old hardware
seed
cleaner
Requirement #2: Utility (1)
A novel paper as a coating in insulated
cup
Is considered useful
• The usefulness of your invention be relatively great to “commercial viability” test – Provided the usefulness is *functional*, not
aesthetic
– Worst case in applying a new chemical • A use hasn’t been found but its inventor will find one
later
• the inventor can’t state a realistic use, PTO won’t grant a patent
– For example,
Pic ref: diytrade.com
Mobile refrigerator
cup
canteen
Utility (2): software
• Software-based inventions usually satisfy the utility requirement
– Software has a utilitarian function, even if used to
• create aesthetic (Ex. CG) on an idle monitor or
• To evaluate golf scores or
• Mutual fund assets
– The major problem of software inventions
• may not fall into a statutory class (req. # 1)
Utility (3): non-patentable case
• The invention should be tested in case it falls into “legally not useful” categories listed
Pic ref: guardian.co.uk
Pic ref: mrsturtle.com
Unsafe New Drugs
Whimsical case
Useful only for illegal purpose
Immoral case
Non-operable case
Nuclear weapon
Theoretical phenomena
Aesthetic purpose
Utility (4): new drugs about
un-safety or safety
• PTO won’t great a patent on any new drug unless the patent can show
– It’s useful in treating some condition &
– it’s relatively safe for its intended purpose
Drug patent Y
N Un-safety
Safety
Inventor can patent the use of
chili to treat baldness
Utility (5): create a patentability
from a whimsical case
• Whimsical case
– US3712271 (1973) Toe holder (a figure-eight-shaped device) • Hold your big toes
together to prevent sunburned
US3712271, 1971, Toe holder
• Statutory class(req#1) - New use!!
– US6321753 (2001) Tanning restraint apparatus and methods… • cited US3712271, became a
useful case
• status: patented case
Brainstorm Miraculous Fuzzy logic
Requirement #3: Novelty (1) –
Prior Art
• The novelty requirement of a patent (like “unobviousness”) is often misunderstand
– Prior art
• Your invention must be pass the “novelty” test on physical or method-step difference over all prior developments in the world – Referred these collection of prior- developments & concepts
• Determine what is prior art is complex!!
• Understand what your invention must “differ from” – Start from how the law defines “prior art”
Novelty (2):
Prior Art in patent laws
• According to Section 102 of the patent laws, the term “prior art”
– means generally the state of knowledge existing or publicly available either
• before the date of your invention or
• > 1 year prior to your earliest patent application date.
Novelty (3): Prior Art -
Date of your invention
• Decide what prior art need to determine the “date of your invention”
– Under the U.S. system you can usually go back earlier than your filing date (if you can prove!!)
• the earlier 3 dates (filing, building and testing, or conception accompanied by diligence)
you conceived invention by diligence
in a NAFTA or WTO country
built and tested your invention in the U.S. or a country that is a
member of NAFTA or the WTO. (35 USC 104)
filed your patent application
(provisional or regular)
Novelty (4): Prior Art –
Reduction to Practice
• In the US law, the building and testing of an invention is called a “reduction to practice.” (2 ways on “reduction to practice”)
– “constructive”: the filing of a patent application, while not an actual reduction to practice
– “actual”: by producing a physical embodiment of the invention
• SC-manufacture, provide a prototype or model of the invention.
• SC-method, perform the method and confirm the results.
• SC-composition of matter, synthesize or otherwise produce the composition.
[email protected] 21 SC: Statutory Class Ref: patentlens.net
Summary
• Start from Patentability – 4 legal requirements
– req.1: a statutory class – lawsuits & 5 classes cover processes, Machines, Manufactures, Compositions, New use
– req.2: Utility including software, non-patentable case by drug issue & how to turn back a whimsical case
– Req.3: Novelty - prior art (Reduction to Practice)
Reference
• David Pressman, chapter 5, “Patent It Yourself: Your Step-by-Step Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN-10: 1413313825 – Reference by “Previous Course Slide” record set: introduce invention,
evaluate invention & WM2Patentability
• CNC (Computer Numerical Control) machine cutting, http://www.youtube.com/watch?v=u2T2geQoSx8&feature=related
• Patentlens: http://www.patentlens.net/ • Blog: http://fungsiong.blogspot.com/
– Introduce hybrid TV (hbbTV) including widget design, Android technology (API), system, ecosystem, framework, service, application…,
– Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork
– Some programming info. as Apache wookie, refactoring tech, CE-HTML, a solution about removing a backdoor “Trojan” & surveillance paper
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