© 2008

International Intellectual Property

June 16, 2009

Class 2

Introduction to Patents

© 2008

Major Types of Intellectual Property

• Patents• Copyrights• Design Protection• Trade Secrets• Trademarks

Patents

• Patent – Set of legal rights granted to an inventor of a product or

process

• What’s protected?– An invention that

• New (or “novel”)

• Involves an Inventive Step (or “non-obvious”)

• Capable of Industrial Application (or “useful”)

• Enabled

• What’s not protected?– Laws of nature, physical phenomena, abstract ideas

© 2008

Patents

• How do you get a patent?– Apply to the patent office

– Meet certain requirements

• How long does a patent last?– 20 years from filing of the application (minimum term

under TRIPS Agreement)

• Rights of others– No independent discovery

– Only if licensed

© 2008

Purpose of Patent System

• Patents serve 3 main purposes:1. Stimulate inventive activity

2. Encourage commercialization of inventions

3. Disseminate technical information • Enablement requirement

• Inventor must disclose the invention in sufficient detail to allow a PHOSITA to practice the invention without undue experimentation

© 2008

Patents – Discovery and Invention

• Discovery vs. Invention– Discoveries of properties of nature are NOT

patentable• New mineral/plant

• E=mc²; law of gravity

– But if a human intervenes to make use of or alter naturally-occurring phenomena, that is considered an “invention” and IS patentable

© 2008

Diamond v. Chakrabarty 447 U.S. 303 (1980)

• U.S. Supreme Court held that Chakrabarty’s invention, a micro-organism, was patentable subject matter because:– The invention was a new, non-naturally

occurring bacterium– The bacterium was different than anything

found in nature and it had the potential for significant utility

© 2008

Patentable Subject Matter

• Patentable subject matter very broad in U.S.– U.S. Patent Act provides that “[w]hoever invents or discovers any

new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore….”

• Diamond v. Chakrabarty: subject matter must be broad because inventions are often unforeseeable and unpredictable

• Patentable subject matter not as broad in Canada– Harvard College v. Canada (Sup. Ct. of Canada 2002)

• Patent Act limits “invention” to “art, process, machine, manufacture or composition of matter”

• Patentable subject matter does not include higher life forms such as the OncoMouse

© 2008

Patenting Human Genome

• Human Genome Project was completed in 2000– Mapping of human chromosomes that turned genetic

raw material into a powerful text to be read and interpreted

• The U.S. and European Union have determined that certain uses of naturally-occurring genetic code are patentable– E.g., genetic sequences used as the basis of testing for

susceptibility to certain diseases such as breast cancer

© 2008

New (or “novelty”) Requirement

• Invention must be new (or novel) meaning it has not been disclosed before the initial filing of the patent application (i.e., the priority date)– Cannot be “anticipated” by prior art

– Jurisdictions differ as to the type of prior art required

• E.g., written vs. oral disclosure

– Anticipating prior art usually can come from anywhere in the world, but there may be different requirements regarding “domestic” vs. “international” prior art

© 2008

Novelty Requirement in U.S.

• Under U.S. law, an invention is not novel if it was– “known or used by others in this country, or patented or

described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent”

– “patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.”

• 35 U.S.C. § 102(a)-(b)

© 2008

Motorola v. Agence Spatiale Européenne

• Facts: The EPO granted Motorola a patent on a satellite cellular system. Agence Spatiale challenged the patent on novelty grounds arguing that the invention was disclosed in a prior publication.

• Holding: The Technical Board of Appeals confirmed the revocation of Motorola’s patent for lack of novelty. The term “handing off” was not limited to a process that occurs exclusively within the satellites, and therefore the patented invention is not novel because it encompasses the previously-disclosed intra-satellite handing off process.

© 2008

Inventive Step/Non-obviousness

• Inventive step or non-obviousness requirement is intended to limit patents to those inventions that have made a significant contribution to the development of new and useful technologies

• Patent Offices/Courts ask:– Was the invention “obvious” to a person

reasonably skilled in the art?– E.g., Ballpoint pen example (p. 146)

© 2008

Utility

• To be patentable, an invention must be useful or “capable of industrial application”– Inventor does not have to show commercial success

• Traditionally, this requirement was a non-issue because the inventor could almost always show some use for his invention

• Developments in biotechnology and chemistry have given rise to a number of “speculative” patent applications– Is the invention of a new compound that might be useful in the

treatment of disease patentable? Should it be?

© 2008