January 22nd, 2010 by David.
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EXTRACTS FROM THE OPINION OF THE SUPREME COURT ON DETERMINING IF AN NEW PRODUCT OR METHOD IS OBVIOUS. , KSR INT’L CO. V. TELEFLEX INC. (2006)
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
When a work is available in one field of endeavor, design, incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 [obviousness] likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill .
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (CA ed. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statement; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and created steps that a person of ordinary skill in the art would employ.
[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovations the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because invention in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.
[An claimed invention can be proved obvious merely by showing that the combination was “obvious to try.”] When there is a designed or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely thte product not of innovation but of ordinary skill and common sense.. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.
January 29th, 2009 by David.
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This case required the Federal Court of Appeals to address the relation between two patent law concepts, the doctrine of equivalents and the rule of prosecution history estoppel. The Court in an earlier 1997 case had affirmed that a patent protects its holder against efforts of those who would copy the invention and would seek to evade liability for infringement by making only insubstantial changes to the patented invention. This is covered in the law by the Doctrine of Equivalents, which prevents such a practice.
The rule of prosecution history estoppel means in summary that if concessions are made during the process of amending claims to make them allowable, then those concessions limit the meaning of the resulting claims. That is, this prosecution history “estops” him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent.
“When the patentee has chosen to narrow a claim, courts may presume the amended text was composed with awareness of this rule and that the territory surrendered is not an equivalent of the territory claimed. In those instances, however, the patentee still might rebut the presumption that estoppel bars a claim of equivalence. The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent”
FESTO CORP. V. SHOKETSU KINZOKU KOGYOKABUSHIKI CO. (00-1543)
234 F.3d 558.
January 29th, 2009 by David.
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In short, the task is to teach your attorney everything you know about your invention, especially the features you feel are important to be protected. You can teach your attorney in any manner that does the job. That might be through pictures, a prototype, sketches or drawings, or verbally description. You will also want to advise your attorney of any competing products or processes that you may know. You don’t need to go out of your way to learn of competing products or processes, but it would help your attorney evaluate your new device or process if you could tell him about any when he meets with you sufficiently so he could compare those with your invention.
January 29th, 2009 by David.
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In re Bilski, Fed. Cir., holds that a Patent-Eligible Process Must Meet Machine-or-Transformation Test:
In a 2008 ruling, the Federal Circuit Court of Appeals released a definitive test on whether a process claim, including a business patent claim, is written so narrowly as to encompass only a particular application of a fundamental principle, such as a mental action or a scientific or mathematical principal, instead of attempting to pre-empt the principle itself. In conclusion, it stated that a claimed process is patent-eligible only if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. In re Bilski, Fed. Cir., No. 2007-1130, 10/30/08.
December 11th, 2008 by David.
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PATENT: The cost of preparing and filing a utility patent application will depend whether the application is for a provisional patent application, a nonprovisional patent application, or a design patent application. (Click PATENTS to the right for a description of each kind of application and to see which one you might need.) The cost will also vary depending on the complexity of the invention. The filing fee will likely be $462. The attorney fee for a simple application might be between $3000 and $4000. Additional fees will follow when a first response is received from a patent examiner, which might be 18 months or more.
TRADEMARK: The cost of filing for registration of a trademark is usually around $800, including a filing fee of either $275 or $325. Additional fees may follow in several months. Often, those additional fees will also be less than $1000 and often less than $500. (Click TRADEMARK to the right to see if you need a trademark)
COPYRIGHT: The filing fee for an application to register a copyright is $35. For an application to register printed work, such as a book, the attorney time might be expected to be approximately $200. Other works might be similar in costs. (Click COPYRIGHT to the right to see if you need a copyright)
October 31st, 2008 by David.
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A United States patent grants its owner an exclusive right to make, use and sell his invention within the United States. That is, a person can be restrained from manufacturing the invention in the United States (although the invention can be manufactured in another country unless a patent is obtained there also). If the invention is manufactured in another country, a person cannot bring it into the United States because he cannot use it here. Nor can he import it for sale in the United States. One who infringes on a patent subjects himself to losses incurred by the patent owner, including three times the patent owner’s lost profits.
KINDS OF PATENTS
Design patents are available to protect the artistic nature of a device whose primary element is functional.
Utility Patent:
A utility patent protects the functional aspects of a device or process.
A nonprovisional utility patent is the exclusive right to make, use or sell a patented device or process for twenty years from the date the application was filed in the United States, or the priority date if earlier filed in another country.
A provisional utility patent application is an opportunity for you to file an abbreviated application for a utility patent (device or process) and delay the preparation and filing of a nonprovisional application for up to a year and still obtain a patent filing date now that is retained in a year provided all information disclosed and claimed in the nonprovisional application is found in the provisional application.
Either a provisional or nonprovisional application can be filed for a new or improved device or process.
Generally, an application must be filed on or before one year from the date the device or process was first used publically or offered for sale by the inventor, not including experimental use.
A nonprovisional utility patent is the exclusive right to make, use or sell a patented device or process for twenty years from the date the application was filed in the United States, or the priority date if earlier filed in another country.
A provisional utility patent application is an opportunity for you to file an abbreviated application for a utility patent (device or process) and delay the preparation and filing of a nonprovisional application for up to a year and still obtain a patent filing date now that is retained in a year provided all information disclosed and claimed in the nonprovisional application is found in the provisional application.
Either a provisional or nonprovisional application can be filed for a new or improved device or process.
Generally, an application must be filed on or before one year from the date the device or process was first used publically or offered for sale by the inventor, not including experimental use.
Design Patent:
Rather than protecting the function of a device or a method of achieving a useful result as in a utility patent, in general terms, a design patent protects the look of a functional device. Design in this sense refers to the aesthetic quality of a functional device, not the engineering aspects. A design patent is valid for 14 years from the date of grant.
Plant Patent:
“A patent may be obtained for anyone that invents or discovers and asexually reproduces any distinct and new variety of plant other than a tuber propagated plant or a plant found in an uncultivated state ….” 35 USC Part I, section 181.
