Chapter 1

Patents: History

• Rejected in the classical world. • Aristotle’s objections:

– Harassments (hard to define innovation)– Leads to changes of regime (social change)

• Venetian 1474• Spreads throughout Europe from Venice. • England: Becomes mixed with monopoly grants.• 1623: Statute of Monopolies: Bans crown

monopolies, but with an exception for innovations.

• 17th and 18th Centuries: Remains Embryonic.

Patents: History II

• Late 18th Century: Significant developments in England and in U.S. – Liardet v. Johnson (1778): English Judge Mansfield

recognizes disclosure of information as the chief justification and function of the patent system

– U.S.: Includes clause in Constitution: “to promote Science and useful Arts.”

• 1790: First US patent system. At first includes an examination requirement, but high govt officials are charged with the task of the examining.

• 1793: U.S. switches to “registration” system.• Cir. 1810: “Claims” begin appearing in US patents• 1836: U.S. goes back to examination system and

establishes a more modern Patent Office. Claims are required by law.

Patents: History III• cir. 1850: The doctrine of “invention” begins in

US case law; it will evolve into the “nonobviousness” requirement of modern law.

• Patent controversies of the late 19th century in Europe: Some nations even abolish patents altogether, but the trend is later reversed.

• 1883 Paris Convention.• Early to mid 20th Century: Hostility to patents at

U.S. Supreme Court.• 1952: Recodification of the patent laws;

codification of the nonobviousness requirement• 1982: Creation of the Federal Circuit. • 1994: TRIPs Agreement

Patent History: Lesson• This is a very young field; it is still evolving

rapidly. • Major developments:

– Disclosure– Examination System (Admin. & Judicial

Expertise) – Rise of the Claim to Define Rights – Nonobviousness– Globalization

Claims• Goal: Claims must “particularly point[] out and distinctly

claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112. In other words: – A claim provides as precise (and, hopefully, from the

inventor’s perspective, as broad) of a description of the invention as possible, and yet …

– It must not cover (i.e. describe) anything previously known in the world.

• Claims are “must be the object of a sentence starting with ‘I (or we) claim’ … (or the equivalent).” PTO Manual of Patent Examining Procedure § 608.01(m).

• Remember: CLAIMS DO NOT HAVE TO ENABLE!!!

Chakrabarty Example

• What I claim as new and desire to secure by Letters Patent of the United States is:

1. A bacterium from the genus Pseudomonas containing therein

at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

Preface or Introductory Phrase

• What I claim as new and desire to secure by Letters Patent of the United States is:

1. A bacterium from the genus Pseudomonas containing therein

at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

Preamble

• What I claim as new and desire to secure by Letters Patent of the United States is:

1. A bacterium from the genus Pseudomonas containing therein

at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

Transition

• What I claim as new and desire to secure by Letters Patent of the United States is:

1. A bacterium from the genus Pseudomonas containing therein

at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

Elements

• What I claim as new and desire to secure by Letters Patent of the United States is:

1. A bacterium from the genus Pseudomonas containing therein

at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

• How many elements are in this invention?

Elements

• What I claim as new and desire to secure by Letters Patent of the United States is:1. A bacterium from the genus Pseudomonas containing therein

at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

• Answer: At least two.

Chakrabarty Claim 7: Identify the Parts

• What I claim as new and desire to secure by Letters Patent of the United States is:

7. An inoculum for the degradation of a preselected substrate comprising a complex or mixture of hydrocarbons, said inoculum consisting essentially of bacteria of the genus Pseudomonas at least some of which contain at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

Chakrabarty Claim 7: Preamble

• What I claim as new and desire to secure by Letters Patent of the United States is:

7. An inoculum for the degradation of a preselected substrate comprising a complex or mixture of hydrocarbons, said inoculum consisting essentially of bacteria of the genus Pseudomonas at least some of which contain at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

Chakrabarty Claim 7: Transition

• What I claim as new and desire to secure by Letters Patent of the United States is:

7. An inoculum for the degradation of a preselected substrate comprising a complex or mixture of hydrocarbons, said inoculum consisting essentially of bacteria of the genus Pseudomonas at least some of which contain at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

How many elements?

• What I claim as new and desire to secure by Letters Patent of the United States is:

7. An inoculum for the degradation of a preselected substrate comprising a complex or mixture of hydrocarbons, said inoculum consisting essentially of bacteria of the genus Pseudomonas at least some of which contain at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

Chakrabarty Claim 7: Single element.

• What I claim as new and desire to secure by Letters Patent of the United States is:

7. An inoculum for the degradation of a preselected substrate comprising a complex or mixture of hydrocarbons, said inoculum consisting essentially of bacteria of the genus Pseudomonas [element] at least some of which contain [further transition]

at least two stable energy-generating plasmids [sub-elements], each of said plasmids providing a separate hydrocarbon degradative pathway.

What is it?

• Having described my invention, what I claim, and desire to secure by Letters Patent is as follows: …

5. The method of, and apparatus for, transmitting vocal or other sounds telegraphically by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds.

What is it?

• Having described my invention, what I claim, and desire to secure by Letters Patent is as follows: …

5. The method of, and apparatus for, transmitting vocal or other sounds telegraphically by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds.

• Answer: Bell’s claim for a telephone and the telephonic process.

What is it? • I claim:

1. The combination with [combination format]

a road-locomotive, provided with suitable running gear including a propelling wheel and steering mechanism,

of

a liquid hydrocarbon gas-engine of the compression type, comprising one or more power cylinders,

a suitable liquid-fuel receptacle,

a power shaft connected with and arranged to run faster than the propelling wheel,

an intermediate clutch or disconnecting device and

a suitable carriage body adapted to the conveyance of persons or goods.

What is it? • Answer: Seldon’s patent on the car. (See Chapter 7,

Nonobviousness.)

What is it? • We claim:

1. An optical waveguide comprising:

a cladding layer form of a material selected from the group consisting of pure fused silica and fused silica to which a dopant material on at least an elemental basis has been added, and

a core formed of fused silica to which a dopant material on at least an elemental basis has been added to a degree in excess of that of the cladding layer so that the index of refraction thereof is of a value greater than the index of refraction of said cladding layer, said core being formed of at least 85 percent by weight of fused silica and an effective amount up to 15 percent by weight of said dopant.

Answer: Fiber Optic Strand

What is it? • We claim:

1. A __________ comprising

a chamber having

end reflective parallel members and

side members,

a negative temperature medium disposed within said chamber, and

means arranged about said chamber for pumping said medium, said side members being transparent to the pumping energy and transparent to or absorptive of other energy radiated thereat. [Note: Means + Function.]

Answer: A Laser

Pencil Claim Drafting Exercise:

• 1. A writing instrument, comprising a composition soft enough to leave marks on a writing surface, and means for holding said composition in a position to mark a writing surface.

• 2. A writing instrument according to claim 1, wherein the composition includes a substantial amount of either lead or graphite.

• 3. A writing instrument according to claim 1, wherein the composition is comprised of approximately 60% graphite and 40% clay, and the base has attached to it a deformable eraser capable of substantially erasing marks made by the writing instrument.

Claim Drafting:

Coffee Cup Holder Example

Prior Art Comparison

Cup Holder: Actual

• I claim: 4. A holder for encircling a liquid-containing cup to reduce the rate of heat transfer between the liquid contained in the cup and a hand gripping the holder encircling the cup, comprising

a band of material formed with an open top and an open bottom through which the cup can extend and an inner surface immediately adjacent the cup, the band including

a plurality of discrete, spaced-apart, approximately semi-spherically shaped depressions distributed on substantially the entire inner surface of the band so that each depression defines a non-contacting region of the band creating an air gap between the band and the cup, thereby reducing the rate of heat transfer through the holder.

Cup Holder: Edited• I claim:

4. A cup holder for encircling a cup comprising

a band of material formed with an open top through which the cup can extend and an inner surface immediately adjacent the cup, the band including

a plurality of discrete approximately semi-spherically shaped depressions distributed on substantially the entire inner surface of the band so that each depression defines a non-contacting region of the band creating an air gap between the band and the cup.

• Is this any better? Can the highlighted language be eliminated?

Infringement Action

Patent (specifically the claims)

Legal Document

vs.The “accused product” (or process)

Real World Thing