Chapter Twenty | Intellectual Property: Patents

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Introduction To Intellectual Property

The Constitution of the United States provides the authority of the U.S. Congress to regulate that area of law known as intellectual property.

 “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries …” (Article I, Section 8)

Intellectual property flows from inventions of tangible things and creative work, including written and artistic expression or symbols or names (marks) that identify goods or services. According to the World Intellectual Property Organization (WIPO), “…intellectual property refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce [and]  … is divided into two categories:

  • Industrial Property includes patents for inventions, trademarks, industrial designs and geographical indications.
  • Copyright covers literary works (such as novels, poems and plays), films, music, artistic works (e.g., drawings, paintings, photographs and sculptures) and architectural design.”

This type of property, often called “knowledge assets,” represents significant value to its owners. This area of law provides owners with a legal framework to protect tangible and intangible knowledge assets from unauthorized use or other forms of infringement. Owners are required to file with the U.S. Patent and Trademark Office (USPTO) for protection in the U.S. and with the World Intellectual Property Organization (WIPO) for purposes of global protection.

Intellectual property law is intended to encourage individuals, whether they are inventors, writers or artists, to be creators and innovators by providing for a limited period of time during which the monopoly of ownership allows them to profit from their creativity.

We will begin our examination of intellectual property with patent law.

Purpose Of Patents

A patent creates the exclusive right to exclude others from making, using, importing, and selling the patented innovation to an inventor, or patent holder, for a limited period of time. Congress first enacted a Patent Act in 1790 (1 Stat. 109). At present, the U.S. Patent Act (35 U.S.C. §§1 et seq.) is the controlling statute governing patent law. The grant of a patent gives the patent holder monopoly rights for a limited period of time to benefit from the invention. The grant of exclusive rights to an inventor encourages the investment necessary for the development of new and useful discoveries.

Patent Requirements

The Act grants the right to obtain a patent to anyone who “… invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof …” (35 U.S.C. §101). In order for the subject matter to be patentable, it must fit within one of those categories and also be novel, non-obvious and useful.

Therefore, in order for an invention to be patentable it must meet the following essential requirements: (1) patentable subject matter, (2) utility, (3) novelty, (4) non-obviousness, and (5) disclosure.

Patentable Subject Matter

The subject matter of a patentable invention must fall into one of the categories described in §101. Any “… process, machine, manufacture, or composition of matter, or … improvement thereof …” is eligible. (35 U.S.C. §101). However, laws of nature, physical phenomena, and abstract ideas are not considered eligible for patent protection.

The court in Mayo clarifies what is patentability and affirms that laws of nature are not patentable.

 

Case Study

Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Supreme Court of the United States, 566 U.S. 66 (2012)

Procedural Posture

Respondent licensee of patents relating to the use of drugs to treat autoimmune diseases brought an action against petitioner competitors alleging that the competitors infringed the patents, but the competitors asserted that the subject matter of the patents was unpatentable laws of nature. The U.S. Court of Appeals for the Federal Circuit upheld the patents. Certiorari was granted.

Overview

The patents concerned a method of determining the proper dosage of thiopurine drugs which were metabolized differently by different patients with autoimmune diseases to avoid harmful side effects or ineffectiveness. The U.S. Supreme Court unanimously held that the patents were not patent-eligible since the relationships between concentrations of metabolites in the blood and the likelihood that a thiopurine drug dosage would prove ineffective or cause harm were known laws of nature, and the patents did not describe genuine applications of those laws. The steps of administration of the drugs by physicians who already used the drugs, advising the physicians to apply the natural laws in making treatment decisions, and directing the measurement of metabolite levels were well known and simply told the physicians to engage in well-understood, routine, conventional activity previously engaged in by scientists in the field. Further, considering the steps as an ordered combination added nothing to the laws of nature that was not already present when the steps were considered separately, and there was no inventive concept in the claimed application of the natural laws.

Laws of nature, natural phenomena, and abstract ideas are not patentable. A new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E equals mc squared, nor could Newton have patented the law of gravity. Such discoveries are manifestations of nature, free to all men and reserved exclusively to none.

Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. Monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it. However, too broad an interpretation of this exclusionary principle could eviscerate patent law. All inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Thus, a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm. An application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.

If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself. A patent, for example, could not simply recite a law of nature and then add the instruction “apply the law.”

Outcome

The judgment upholding the patents was reversed.

The Diamond case examined a different question presented by the patentable subject matter requirement, namely, whether a live, human-made organism is patentable.

 

Case Study

Diamond v. Chakrabarty

Supreme Court Of The United States, 447 U.S. 303 (1980)

Procedural Posture

Petitioner, Commissioner of Patents and Trademarks, appealed the judgment from the United State Court of Customs and Patent Appeals, which allowed respondent microbiologist’s patent claims for a genetically engineered micro-organism that was capable of breaking down crude oil.

Overview

Respondent microbiologist filed patent claims for human-made, genetically engineered bacterium that was capable of breaking down multiple components of crude oil. The court affirmed the judgment that allowed respondent’s claims. The court rejected the argument of the patent office board of appeals that 35 U.S.C.S. § 101 was not intended to cover living things such as laboratory created micro-organisms. The court held that respondent’s micro-organism constituted a “manufacture” or a “composition of matter” within the meaning of 35 U.S.C.S. § 101 and thus qualified as patentable subject matter. The court found that respondent had produced a new bacterium with markedly different characteristics from any found in nature and which had the potential for significant utility. The court held that the language of 35 U.S.C.S. § 101 embraced respondent’s invention.

Syllabus

Title 35 U. S. C. § 101 provides for the issuance of a patent to a person who invents or discovers “any” new and useful “manufacture” or “composition of matter.” Respondent filed a patent application relating to his invention of a human-made, genetically engineered bacterium capable of breaking down crude oil, a property which is possessed by no naturally occurring bacteria. A patent examiner’s rejection of the patent application’s claims for the new bacteria was affirmed by the Patent Office Board of Appeals on the ground that living things are not patentable subject matter under § 101. The Court of Customs and Patent Appeals reversed, concluding that the fact that micro-organisms are alive is without legal significance for purposes of the patent law.

Decision

A live, human-made micro-organism is patentable subject matter under § 101. Respondent’s micro-organism constitutes a “manufacture” or “composition of matter” within that statute. Pp. 308-318.

(a) In choosing such expansive terms as “manufacture” and “composition of matter,” modified by the comprehensive “any,” Congress contemplated that the patent laws should be given wide scope, and the relevant legislative history also supports a broad construction. While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent’s claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity “having a distinctive name, character [and] use.” ***

(b) The passage of the 1930 Plant Patent Act, which afforded patent protection to certain asexually reproduced plants, and the 1970 Plant Variety Protection Act, which authorized protection for certain sexually reproduced plants but excluded bacteria from its protection, does not evidence congressional understanding that the terms “manufacture” or “composition of matter” in § 101 do not include living things.***

(c) Nor does the fact that genetic technology was unforeseen when Congress enacted § 101 require the conclusion that micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection. The unambiguous language of § 101 fairly embraces respondent’s invention. Arguments against patentability under § 101, based on potential hazards that may be generated by genetic research, should be addressed to the Congress and the Executive, not to the Judiciary.***

Outcome
The court affirmed the judgment that allowed respondent microbiologist’s patent claims. The language of the patent statute covered respondent’s invention of a living, genetically engineered micro-organism.

The Diamond court concluded that the fact that the micro-organisms in question were alive was not legally significant to its decision since §101 allows for “… any new and useful … manufacture, or composition of matter …“ to be patentable.

Utility

Utility requires that the invention be useful but not hypothetical or abstract. The patent applicant must demonstrate that the invention is operational and it has both a beneficial and practical use.

In State Street Bank v. Signature Financial Group, Inc. (149 F.3D 1368 (1998)) the Court of Appeals evaluated whether an algorithm (software) that managed a mutual fund investment structure was patentable. Since “abstract ideas” are not patentable and an algorithm is an abstract idea it is, therefore, not patentable subject matter. The court, in State Street, though, using the “machine or transformation test” concluded that “… to be patentable an algorithm must be applied in a “useful” way.” The court in Bilski v. Kappos (561 U.S. 593 (2010)) decided that the State Street standard was not the exclusive test of patentability but a “useful clue” when determining patentability.

Novelty

The requirement that the invention is novel means that patent will not be granted to a new invention that is already available to the public. If the invention has been disclosed to the public prior to the filing of an application for a patent the new invention is not considered to be novel. If the “… claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention …” it is not patentable. (35 U.S.C. §102). Prior public disclosure is determined by a search for what is called I” Prior art consists of all of the information available to the public prior to the date of filing that is pertinent to the invention.

Non-Obviousness

The Patent Act of 1952 added the requirement of non-obviousness to the standard for patentability. (35 U.S.C. §103). The Supreme Court established the three conditions that must be met to determine whether the non-obviousness requirement has been met. (Graham v. John Deere Co., 383 U.S. 1 (1966)). The Court, in determining whether the standard of non-obviousness has been met, required that:

  1. the scope and content of the prior art must be determined;
  2. differences between the prior art and invention under consideration must be ascertained; and
  3. the skill that a person of ordinary skill in the art under review.

For example, if the new invention is not sufficiently different from others like it or if the new invention would be obvious to a person of ordinary familiarity with that type of invention then the non-obviousness standard has not been met by the new invention.

Sufficiency of Disclosure

The monopoly granted to the patent holder requires that the inventor fully describe the details of the invention in a way that a person skilled in the art would be able to make or use it. The description must also present the “best mode contemplated by the inventor or joint inventor of carrying out the invention” meaning that the disclosure must describe the inventor’s preferred way of making the invention. (35 U.S.C. §112).

Types of Patents

All patents must meet the standards of patentability described above, i.e., the invention must be of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof. There are, however, different types of patents to consider.

Utility Patents

Utility patents protect the functionality of the invention and are the most common. A utility patent protects the functional aspects of the invention, but a design patent protects the visual look. The term of protection for a utility patent is twenty years from the earliest filing date of the application.

Design Patents

Design patents protect “… any new, original and ornamental design for an article of manufacture …” (35 U.S.C. §171). These patents focus on the non-functional, visual aspects of the object. The drawings included in the application are very important since they clearly establish the visual characteristics of the subject of the application. The term of protection for design patents is fifteen years from the date of the grant of the patent.

Plant Patents

The Plant Patent Act of 1930 (35 U.S.C. Ch. 15) amended the Patent Act to make new varieties of plants eligible for patent protection. A patent is available to anyone who “… invents or discovers and asexually reproduces any distinct and new variety of plant …”. (35 U.S.C. §161). A grant of a plant patent will allow the owner to prevent others “… from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced.” (35 U.S.C. §163). The term of protection for a plant patent is twenty years from the earliest filing date of the application.

Business Methods Patents

Business methods are activities related to running a business. Patents for business methods have been available since Congress enacted the Patent Act of 1790. The issue to be addressed is whether the business method represents a “… new and useful process, … or any new and useful improvement thereof …” (35 U.S.C. §101). The term of protection for business method patents is twenty years from the earliest filing date of the application. This type of patent has become increasingly popular since the 1980s due to the rise of internet companies that use software to develop new “methods” of doing business. As a result, business method and software patents intersect. It is important to remember that while the inclusion of software is not a prerequisite for a business method patent, it frequently incorporates software. Tax strategies would be an example of such a patent.

While the USPTO, for many years, did not recognize the patentability of business methods the Patent Act does not prohibit them. The State Street decision (see above) in 1999 established the rule that patent laws were intended to protect any method, whether or not it required the aid of a computer, so long as it produced a “… useful, concrete and tangible result.” Bilski v. Kappos (561 U.S. 593 (2010)) overruled the “useful” result finding but did not invalidate business method patents. The “useful” result test remains the most appropriate method for determining the viability of a business method patent.

These patents are frequently used by owners to protect innovative business methods that are enabled as a result of software and the internet. They are particularly important in e-commerce applications. Amazon’s patent of its “1-click” shopping system is an example of a business method patent.

Software Patent

A software patent is commonly defined as a patent on any performance of a computer realized by means of a computer program. As with business method patents, patent protection of software is not specifically included in the Patent Act. In fact, the eligibility for patent protection for software remains unsettled. The issue has been addressed several times by the courts but a definitive answer has not been provided (see Bilski v. Kappos (561 U.S. 593, 2010), Mayo Collaborative Services v. Prometheus Laboratories, Inc. (566 U.S. 66, 2012) and Alice Corp. v. CLS Bank International (134 S. Ct. 2347, 2014)).

In Alice, the court addressed whether an abstract idea could not be patented just because it was implemented on a computer. The court found that a software implementation of an escrow arrangement was not patent eligible because it is an implementation of an abstract idea.

 

Case Study

Alice Corporation Ltd. v. CLS Bank International

134 S. Ct. 2347 (U.S. Sup. Ct. 2014)

Procedural Posture

A currency transaction facilitator sued a patent assignee, alleging that the claims disclosing schemes to manage certain forms of financial risk were invalid, unenforceable, or not infringed. A district court held that all of the claims were patent ineligible. The United States Court of Appeals for the Federal Circuit affirmed the judgment. Certiorari was granted.

Summary

Judicial precedent has long held that 35 U.S.C.S. § 101 contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.

Judicial precedent treads carefully in construing the exclusionary principle that the laws of nature, natural phenomena, and abstract ideas are not patentable lest it swallow all of patent law. At some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. Applications of such concepts to a new and useful end remain eligible for patent protection.

In applying the 35 U.S.C.S. § 101 exception, the court must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more, thereby transforming them into a patent-eligible invention. The former would risk disproportionately tying up the use of the underlying ideas, and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under federal patent laws.

Judicial precedent sets forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, the court determines whether the claims at issue are directed to one of those patent-ineligible concepts. If so, the court then asks what else is there in the claims before it? To answer that question, the court considers the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application. Case law describes step two of this analysis as a search for an inventive concept, i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

Decision

Asserted computer-implemented inventions–consisting of (1) method for exchanging obligations, (2) computer system configured to carry out method, and (3) computer-readable medium programmed to perform method–held not patent-eligible under 35 U.S.C.S. § 101.

Outcome

The judgment was affirmed.

Patent Application

A patent application requires four parts. They are the specification and claims, the drawings and the inventor’s oath or declaration (35 U.S.C. §115).

The specification is a summary of the technical aspects of the invention. It “… shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” (35 U.S.C. §112). The claims include a description of the novel features of the invention and of the scope of protection that will be created by the patent.

The drawings will show all of the different features of the invention “… where necessary for the understanding of the subject matter sought to be patented” (35 U.S.C. §113). The USPTO may also require a “… a model of convenient size to exhibit advantageously the several parts …” of the invention (35 U.S.C. §114).

Finally, the inventor’s oath or declaration will include a statement that “… the application was made or was authorized to be made by the declarant and but the declarant believes himself or herself to be the original inventor or an original joint inventor …“ of the claimed invention (35 U.S.C. §115).

A patent examiner will review the application thoroughly and examine the prior art. If the review is satisfactory a patent will be issued (35 U.S.C. §131). In the event that the reviewer either rejects, or objects to, the application, the USPTO will notify the applicant and provide reasons for the rejection or objection.

The applicant may request further review of the application (35 U.S.C. §132). If the applicant does not move forward with the application with six months following the rejection or objection the application will be considered to be abandoned (35 U.S.C. §133). The applicant may pursue an appeal to the Board of Patent Appeals and Interferences (BPAI) (35 U.S.C. §134). There are two additional opportunities for appeal if the decision of the BPAI is not acceptable to the applicant. §141 allows the applicant to file an appeal with the United States Court of Appeals for the Federal Circuit. If that option is not taken, the applicant may ”… have remedy by civil action against the Director …” (35 U.S.C. §145).

An inventor can file a provisional patent application (PPA). A PPA is a strategy that will allow the applicant to establish an early filing date for the patent application. The PPA must sufficiently disclose the invention and a full application must be filed within one year. Patent protection continues for a full 20-year patent term from the filing date of the regular application if approved.

Types of Infringement

Direct infringement arises when anyone “… without authority makes, uses, offers to sell, or sells any patented invention within the United States or imports into the United States any patented invention during the term of the patent therefor …” (35 U.S.C. §271).

Anyone who induces another party to infringe on a patent will be liable for indirect infringement (35 U.S.C. §271(b)). Indirect infringement requires that the person allegedly inducing infringement must be shown to have known the existence of the patent. Contributory infringement arises where a party knowingly “… offers to sell or sells within … or imports into the United States a component …” of a patented invention that will be used in a manner that will infringe on the patent (35 U.S.C. §271(c)). In both instances, the existence of direct infringement is required.

Defenses to Infringement

Invalidity and non-infringement are the two most common defenses to patent infringement (35 U.S.C. §282(b)). Invalidity challenges the validity of the patent itself. Since the statute establishes a presumption that the patent is valid the burden of establishing the “… invalidity of a patent …” is on the party asserting such invalidity (35 U.S.C. §282(a)). Raising invalidity as a defense requires a defendant to show that the patented invention did not meet the novelty or non-obviousness standards.

Non-infringement requires the defendant to describe or demonstrate the differences between its invention and the plaintiff’s patent. Essentially, this defense shows that the challenged invention is different from the patent that is the subject of the infringement claim.

If a plaintiff (patent holder) engages in illegal or unethical behavior in order to benefit its patents the patent holder has engaged in patent misuse and will be barred from instituting a patent infringement claim.

First Sale Doctrine

The first sale doctrine allows purchasers of a patented product to resell it without fear of an infringement claim. The Impression Products case supports the “right to tinker” by purchasers of products.

 

Case Study

Impression Products, Inc. v. Lexmark International, Inc.

Supreme Court Of The United States, 137 S. Ct. 1523 (2017)

Syllabus

A United States patent entitles the patent holder to “exclude others from making, using, offering for sale, or selling [its] invention throughout the United States or importing the invention into the United States.” 35 U. S. C. §154(a). Whoever engages in one of these acts “without authority” from the patentee may face liability for patent infringement. §271(a). When a patentee sells one of its products, however, the patentee can no longer control that item through the patent laws—its patent rights are said to “exhaust.”

Respondent Lexmark International, Inc. designs, manufactures, and sells toner cartridges to consumers in the United States and abroad. It owns a number of patents that cover components of those cartridges and the manner in which they are used. When Lexmark sells toner cartridges, it gives consumers two options: One option is to buy a toner cartridge at full price, with no restrictions. The other option is to buy a cartridge at a discount through Lexmark’s “Return Program.” In exchange for the lower price, customers who buy through the Return Program must sign a contract agreeing to use the cartridge only once and to refrain from transferring the cartridge to anyone but Lexmark.

Companies known as remanufacturers acquire empty Lexmark toner cartridges—including Return Program cartridges—from purchasers in the United States, refill them with toner, and then resell them. They do the same with Lexmark cartridges that they acquire from purchasers overseas and import into the United States. Lexmark sued a number of these remanufacturers, including petitioner Impression Products, Inc., for patent infringement with respect to two groups of cartridges. The first group consists of Return Program cartridges that Lexmark had sold within the United States. Lexmark argued that, because it expressly prohibited reuse and resale of these cartridges, Impression Products infringed the Lexmark patents when it refurbished and resold them. The second group consists of all toner cartridges that Lexmark had sold abroad and that Impression Products imported into the country. Lexmark claimed that it never gave anyone authority to import these cartridges, so Impression Products infringed its patent rights by doing just that.

Impression Products moved to dismiss on the grounds that Lexmark’s sales, both in the United States and abroad, exhausted its patent rights in the cartridges, so Impression Products was free to refurbish and resell them, and to import them if acquired overseas. The District Court granted the motion to dismiss as to the domestic Return Program cartridges, but denied the motion as to the cartridges sold abroad. The Federal Circuit then ruled for Lexmark with respect to both groups of cartridges. Beginning with the Return Program cartridges that Lexmark sold domestically, the Federal Circuit held that a patentee may sell an item and retain the right to enforce, through patent infringement lawsuits, clearly communicated, lawful restrictions on post-sale use or resale. Because Impression Products knew about Lexmark’s restrictions and those restrictions did not violate any laws, Lexmark’s sales did not exhaust its patent rights, and it could sue Impression Products for infringement. As for the cartridges that Lexmark sold abroad, the Federal Circuit held that, when a patentee sells a product overseas, it does not exhaust its patent rights over that item. Lexmark was therefore free to sue for infringement when Impression Products imported cartridges that Lexmark had sold abroad. ***

Holding

[1] A patent holder could not bring a patent infringement suit against a toner cartridge remanufacturer to enforce the single-use/no-resale provision accompanying its domestic return program cartridges because once sold, the return program cartridges passed outside of the patent monopoly, and whatever rights the patent holder retained were a matter of the contracts with its purchasers, not patent law;

[2] A patentee’s authority to limit licensees did not mean that patentees could use licenses to impose post-sale restrictions on purchasers that were enforceable through the patent laws;

[3] An authorized sale outside the United States, just as one within the United States, exhausted all rights under the Patent Act.

Outcome

Judgment reversed; case remanded ***

Estoppel

Estoppel in its various forms is a concept that we have discussed earlier in chapters relating to contracts, agency, and business associations. Estoppel may, for a variety of reasons, prevent someone from asserting a claim or defense. Defendants can raise two types of estoppel defenses to an infringement claim. They are file wrapper and equitable estoppel. The file wrapper includes all of the patent documents filed with the USPTO. This type of estoppel prevents an inventor from denying any deficiencies in its invention that were disclosed during the patent application process. Equitable estoppel will arise when the patent holder represented to the defendant that the patent would not be enforced. If the defendant relied on the holder’s misrepresentation then the holder’s claim may be dismissed.

Remedies for Infringement

The Patent Act provides for civil remedies for infringement of a patent. These include injunctive relief, damages and, in exceptional cases, attorneys fees. The statute of limitations for an infringement suit is six years (35 U.S.C. §281 et seq.).

Injunctive Relief

The court may issue an injunction either at a preliminary stage in the dispute or as part of the final resolution of the claim. A preliminary injunction may be issued where the patent holder can demonstrate that there is a significant likelihood that (a) it will suffer permanent harm in its absence, and (b) the patent holder will prevail in its infringement claim.

Damages for Infringement

Damages available to patent holders as a remedy for infringement include compensatory and increased damages. Lost profits and costs are recoverable as compensatory damages where the patent holder can establish the value of the patent. Increased damages are available at the discretion of the court if deliberate or willful infringement has been established. Attorney’s fees may be awarded by the court where willful infringement has been shown.

 

Ethical Considerations

Brewing Infringement

Jim teaches 4th grade history. He developed and patented a tea brewing device. He sold one of the tea brewers to Walter. Walter sees real potential in the tea brewer. He decides to launch a company that will sell the device on the internet. Walter reverse engineers Jim’s design, copies it and begins to sell his version of the tea brewer on his website. Are Walter’s actions ethical?

 

Questions

  1. What is the constitutional basis for intellectual property law?
  2. What rights are granted when a patent is issue?
  3. What is patentable subject matter?
  4. Does a patent application meet the novelty requirement if it is already published?
  5. Do design patents focus on utility of the invention?
  6. How are business method and software patents similar?
  7. What are the two most common types of patent infringement? Explain their differences.
  8. What is the First Sale Doctrine?