Patentability Requirements
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Patentability Requirements

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Start from Patentability – 4 legal requirements...

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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Patentability Requirements Patentability Requirements Presentation Transcript

  • Patentability Requirements (patent law) Req.1 Req.2 Req.3 Statutory Utility Novelty class Chen JingFung (Grace) @csie.ntut.edu.tw 2012/03/22Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
  • 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 Grace@cise.ntut 2
  • Patentability – 4 legal requirements Law 4 legal req. Criteria sectionUnobiousness 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 (?) 5 classificationsStatutory class 101 process machine manufacture composition New use Patent law 35 USC 101 or 35 USC 102 or 35 USC 103 3 Grace@cise.ntut
  • Requirement #1: a statutory class[CS] - lawsuits • Parker v. Flook 437 U.S. 584, 1978 (wiki) Flook case • CCPA -> Supreme Court (1978) • Use of a math algorithm is non-patentabilityCritical lawsuit • Diamond v. Chakrabarty, 447 U.S. 303,1980 (BIO) Chakrabarty • Milestone: anything under sun that is made by man case (1980) • Diamond v. Diehr, 450 U.S. 175, 1981 • 1st software case – successful case Diehr case (1981) • Milestone: can protect the step for using the formula • Bilski v. Kappos, 130 S.Ct. 3218 @ Supreme Court • Start with 08/833892 was rejected by examiner Bilski case • 2010 – re Bilski case (10/400846, 10/108089) was (2010) also gotten “Abandoned” Grace@cise.ntut 4
  • 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 Non- – even have held that all business methods, even if tied to hardware, patentable should not be patentable unless • Affect to determine patent (PTO & CAFC) on subject-matterhardware is patentabilitysubstantially – Software, diagnostic medical techniques, linear programming, data involved compression, and manipulation of digital signals • Make sure your describe & claim it either Pass Machine or – Is tied to a particular machine or apparatus, or Transformation Test – Transforms a particular article into a different state or thing Grace@cise.ntut 5
  • Statutory Class [SC] (2) – Machines• Machines are devices or US7651445, 2010, things used for title: Elliptical trainer 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 Grace@cise.ntut 6
  • Statutory Class [SC] (3) – conventional machines ref: fueleconomy.gov sewage treatment plants Actual hardware and/or as a process for manipulating anelectrical signal or weaving fabrics Ref: want-car.chinatimes.com US5815526 (1998), Signal comprising binary spreading- code sequences 7 Grace@cise.ntut
  • Statutory Class [SC] (4) – software machines • How to make software to be tied with a machine? – As a machine would be claimed: – Most software are claimed • means [or an apparatus] for as processes, also be measuring an object to claimed as machine obtain a set of measurements, and – As a process would be • means [or an apparatus] for claimed: adjusting a milling machine according to the set of • measuring an object to measurements. obtain a set of measurements, and • controlling a milling machine according to the set of measurements.CNC (Computer Numerical Control) machine cutting,ttp://www.youtube.com/watch?v=u2T2geQoSx8&feature=related Ref: wiki 8 Grace@cise.ntut
  • Statutory Class [SC] (5) – Manufactures - US6092278Prior art US6092278, 2000, Method for pencil cores have multi-size in one pencilmanufacturing a pencil-shaped core Grace@cise.ntut 9
  • Statutory Class [SC] (6) – Manufactures - US6092278showing a die used in the manufacture of pencil cores according to the presenta top view of the stripas 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 10 Grace@cise.ntut
  • Statutory Class [SC] (7) – Compositions of Matter US5246717 (1993) Eggs compatible with• Compositions of matter cholesterol-reducing diet and method of producing the same 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. 11 Grace@cise.ntut
  • 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 cleaner 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 Grace@cise.ntut 12
  • Requirement #2: Utility (1)• 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 Is considered useful – For example, cup A novel paper as a Mobile coating in insulated refrigerator cup canteen Pic ref: diytrade.com 13 Grace@cise.ntut
  • 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) 14 Grace@cise.ntut
  • Utility (3): non-patentable case Pic ref: guardian.co.uk Pic ref: mrsturtle.com• The invention should be tested in case it falls into “legally not useful” categories listed Unsafe New Whimsical Useful only for Immoral case Drugs case illegal purpose Non-operable Nuclear Theoretical Aesthetic case weapon phenomena purpose Grace@cise.ntut 15
  • 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 N Un-safety Drug patent Y Safety Inventor can patent the use of chili to treat baldness Grace@cise.ntut 16
  • Utility (5): create a patentability from a whimsical case• Whimsical case • Statutory class(req#1) - – US3712271 (1973) Toe New use!! holder (a figure-eight- – US6321753 (2001) Tanning shaped device) restraint apparatus and • Hold your big toes methods… together to prevent • cited US3712271, became a sunburned useful case • status: patented case Brainstorm Miraculous Fuzzy logic US3712271, 1971, Toe holder 17 Grace@cise.ntut
  • 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” Grace@cise.ntut 18
  • 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. Grace@cise.ntut 19
  • 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) built and tested your invention in the U.S. or a country that is a member of NAFTA or the WTO. (35 USC 104) you conceived filed your patentinvention by diligence application in a NAFTA or WTO (provisional or country Grace@cise.ntut regular) 20
  • 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. Ref: patentlens.netSC: Statutory Class Grace@cise.ntut 21
  • 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) Grace@cise.ntut 22
  • 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 grace@csie.ntut 23