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

2 Grace@cise.ntut

Patentability – 4 legal requirements

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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

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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

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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

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US7651445, 2010, title: Elliptical trainer

Statutory Class [SC] (3) –

conventional machines

7

sewage treatment plants

Ref: want-car.chinatimes.com

Grace@cise.ntut

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.

Grace@cise.ntut 8 Ref: wiki

CNC (Computer Numerical Control) machine cutting, ttp://www.youtube.com/watch?v=u2T2geQoSx8&feature=related

Statutory Class [SC] (5) –

Manufactures - US6092278

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Prior art

US6092278, 2000, Method for manufacturing a pencil-shaped core

pencil cores have multi-size in one pencil

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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.

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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

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seed

cleaner

Requirement #2: Utility (1)

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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)

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Utility (3): non-patentable case

• The invention should be tested in case it falls into “legally not useful” categories listed

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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

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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

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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”

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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.

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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)

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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.

Grace@cise.ntut 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)

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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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