Patent What is a patent?

government grant right to exclude, not right to use 20 years from filing date governed by federal law federal circuit Information is a public good Non rivalrous On persons use does not interfere with anothers use of the same information Non Excludable You cannot build a fence around your idea Free Rider Problem Others can exploit information without contributing to its creation But need to disclose ideas to utilize invention Without protection, inventor reluctant to disclose information Patent as Incentives incentive to invent incentive to disclose incentive to innovate Right to Exclude patent on a chair with back, seat, 4 legs improvements? Patent Theories Prospect Strong patent right Competitive Innovation Doesnt really like patents Cumulative Innovation Cant have very strong patents Anti commons Afraid that in ore rot have the final patent, youd have to ask and compile all the fragmented parts Patent Thickets Not sure which patent is applicable, so many patents covering the same thing. 35 USC 101 whoever invents or discovers any new and useful process, machine, manufacture, or composition of mater, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Utility court decides usefulness Limits laws of nature physical phenomena abstract ideas Parke Davis v. HK Mulford Challenged because it was a naturally occurring substance 1

Funk Bros v. Kalo patent was kind of broad enablement problem it was preventing all other mixtures involving the same strains Diamond v. Chakrabarty patentable subject matter includes anything under the sun that is made by man no exception for living things but, the laws of nature, physical phenomena and abstract ideas are not patentable human made microorganism patentable? Process claim for the method producing the bacteria allowed Claims for an inoculum allowed Claims of the bacteria themselves AMP v. USPTO (Myriad) cDNA is patentable all introns removed, different chemical characteristic isolated DNA sequences Lourie: Patentable Moore: Short is OK maybe not full length Bryson: Not patentable HeLa: What is an invention? Summary: Natural Things to be patentable, it must be made by man and distinct from the naturally occurring thing But how different? Is isolation enough? Structure or function? How to distinguish a discovery from invention and skill from invention? How did we get here? Abstract ideas are not patentable but applications of abstract ideas are: Pi C = Pi x Diameter Method of calculating circumference using a computer comprising the steps of 1. Measuring the diameter of a circle 2. Inputting the diameter into the computer 3. Generating the circumference using the formula C = Pi x D Method of drilling holes in an aluminum sheet using a computer comprising the steps of 1. Measuring the diameter of a circle 2. Inputting the diameter into the computer 3. Generating the circumference using the formula C = Pi x D 4. Selecting the drill bit based on the circumference 5. Drilling a hole in an aluminum sheet Abstract ideas: Supreme Court precedent unclear Benson (1972): Used algorithm to convert binary coded decimal numbers to pure binary numbers, not patentable because preempts all use of algorithm Algorithm itself not patentable Flook (1978): Used algorithm to calculate alarm signaling abnormal condition in chemical reaction; not patentable, even though limited to catalytic conversion in oil industry Limiting use of particular environment or adding insignificant postsolution activity not enough Diehr (1981): Process of curing rubber using known algorithm was patentable because limited to specific industrial process and transformed a tangible thing 2

 What about intangible things like data? Abstract Ideas: Federal Circuit rules almost anything is patentable Allapat (1994): Software is patentable as long as it produces a useful, concrete and tangible result Invention converted input data from oscilloscope to a form that would give a smother image. The result was a clearer image. State Street (1998): A data processing system for implementing an investment structure for mutual funds is patentable because it has a useful, concrete and tangible result. The result was just numbers. In re Bilski Machine or transformation test Tied to a particular machine or apparatus; or Transforms a particular article into a different state or thing Must impose meaningful limits on the claims scope Must not merely be insignificant extra-solution activity Bilski: Test for patentability of a process 101 expansive and only threshold test machine and transformation test is not sole test of patent eligibility business methods and software are not categorically excluded bilskis concept of hedging risk is an abstract idea Machine or Transformation Test: Open Questions what does it mean to be tied to a particular machine? General purpose computer? What is an article? Data? What does it mean to physically transform an article? Only if data represents physical/ tangible object? How to best exclude patenting of fundamental principles & mental processes? Diagnostic Methods: Lab Corp. v. Metabolife a method for detecting a deficiency of folate comprising the steps of 1. Assaying a body fluid for an elevated level of total homocysteine; and 2. Correlating an elevated level of total homocysteine in said body fluid with a deficiency of folate. Prometheus method to optimize therapeutic efficiency for treatment of GI disorder by: 1. Administering a drug to patient and 2. Determining a patients metabolic response and 3. Administering a subsequent dosage based on the patients metabolic response transformation of an article? Myriad method of screening a tumor sample by comparing a first BRCA1 sequence from a tumor sample and second BRCA1 sequence from a non-tumor sample, wherein a difference in sequence indicates an alteration method of screening cancer therapeutics: 1. Growing host cells with altered BRCA1 gene in presence of potential therapeutic; 2. Determining growth rate of the cells without the protential therapeutic; 3. Comparing the growth rate HYPO 3

when validating online credit card purchases fraud is a problem. Inventor realizes that IP address information can be used as a check against fraud. Basically, an alert could be triggered if someone attempts to make a large internet purchase through an IP address that had previously been used for a fraudulent transaction. Claim: A method for verifying the validity of a credit card transactions over the internet comprising: 1. Obtaining information about other transactions that have utilized the internet address identified with the credit card transaction 2. Constructing a list of credit card numbers used in such other transactions 3. Using the list to determine if the credit card transaction is valid transformation of article? Machine?

HYPO (Facebook) method for displaying a newsfeed in a social network environment, consisting of 1. Generating news items; 2. Attaching informational links; 3. Limiting number of viewers; 4. Assigning an order 5. Displaying news items transformation of article? Machine? Utility 35 USC 101 HYPO I discover a new chemical compound that is very useful as a mouthwash. What types of patents should I try to get? Later, you discover that the same compound can be used as a glass cleaner. Can I prevent you from using the compound as a glass cleaer? Can you get a patent on the method of using this compound as a glass cleaner? Utility Operable utility Capable of fulfilling described function Substantial utility Must have specific, real world use Beneficial (moral) utility Should not be injurious to society Utility must be established at date of filing Operable Utility: In re Swartz Brenner v. Manson In re Fisher Why is a microscope a patentable research tool but an EST is not? Substantial & Specific Utility Invention must have a significant and presently available benefit to the public Invention can be used to provide a well- defined and particular benefit to the public (particular to invention and not to broad class) HYPO Single, double, triple bonds are commonplace in chemistry. A team of scientists at MIT, after a decade of research and experimentation, come up with a process to create metal-metal quintuple bond. The resulting compound has no known application. Is the compound and the process patentable? A young PHD student at Stanford is experimenting on the compound one day and discovers, quite unexpectedly, that is a super-conductor extremely useful in computer chips. Can the student get a patent on the method of use? Beneficial (moral) utility US: Lowell v. Lewis (1817) 4

The word useful is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poisoin people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention. EU: European patents shall not be granted for inventions the commercial exploitation of which would be contrary to ordre public or morality.EPC Art. 53 Beneficial utility (Du Bon) Cuban cigars of very high quality create a distinctive spotting pattern on their wrappers as they are smoked. I invent a cigar wrapper that is treated with a special chemical that mimics this spotting pattern of high quality Cuban cigars. Should the USPTO reject the patent application on utility grounds? HYPO Inventor invents a new chemical that is deadly only to humans and can be easily packaged and dispersed in the heads of missiles. The inventor states in the specification that the chemical will be extremely useful as a chemical weapon that does not affect plants and animals. Should the USPTO reject the patent application on utility grounds? HYPO Inventor invents a new medical test that can be administered to pregnant women in the first trimester to determine that eventual hair and eye color of their developing fetus. The inventor states in the specification that the test will be extremely useful for parents that wish to have children with specific physical characteristics. Should the USPTO reject the patent application on utility grounds?

The Patent Document Getting a Patent 39% of filed applications result in issued patents average pendency is 31.1 months 415K applications/ year median cost to file an application is $10- $12K median cost for patent infringement suit is $2.5M Patent Application Process Patent Prosecution (History) Sources of law Title 35 (the patent code) 37 CFR Manual of Patent Examining Procedure (MPEPE) Ex Parte Process Patent Prosecution Write and file application Prior art search Confirm compliance with patentability requirements Office action (usually rejection) Amendment Second office action: Allowance/ Rejection If reject: appeal, file continuation, CIP, RCE, or abandon Specification Cover page Abstract Description of background problem, invention, how to make and use invention Drawings Claim Preamble Introduce and identify the nature of invention Should be broad 5

 a cp and holder combination transition an invention [comprising] or [consisting of] body one sentence listing all elements of the invention and explaining how each element interacts with each other internal references must be clear. Use said NO: A U-shaped bar that pivots in a passageway YES: a bar having a generally U-shape with one leg extending into said passageway for pivotal movement of said bar about the axis of said passageway. claim body must set forth how each element interacts with each other NO: A band that encircles a cup with depressions YES: a band having an open top and an open bottomwith a plurality of discrete, spaced apart, approximately semi-spherical shaped depressions Independent v. dependent claims Dependent claims incorporate all limitations of independent claim and aadd more limitations Claim 1&4: independent Claim 2, 3, 5, & 6: dependent The cup and holder combination of claim 1 Avoids prior art If broader claim is invalidated, the narrower claim might survive Inverted pyramid Disclosing the Invention: 112 Requirements Specification: Enablement: written description best mode Claims: definiteness 112 Requirements: Enablement why are there disclosure requirements? Teaching: Must disclose invention to public and explain how to make and use it Commensurability Scope of patent limited by what you disclose OReilly v. Morse What is the right balance? Broad patent protection Strong incentive for original inventor First inventor will efficiently allocate resources and improve invention Narrow patent protection Strong incentive for improvers More people attempting to improve invention increases technological innovation Consolidated Electric Light Finding a species does not necessarily enable a genus How much does the specification teach? Commensurability? Enablement (Rule) Disclosure must enable a person having ordinary skill in the art (PHOSITA) to make and use the claimed invention without undue experimentation Liebel Flarsheim Co v. Medrad Summary: Enablement Specification must enable PHOSITA to practice invention without undue experimentation 6

 Measured at date of filing If specification teaches away suggest undue experimentation is required Genus v. Species: Full scope of invention must be enabled, but not every embodiment Distinctly different embodiments must be enabled Nascent, unpredictable technology requires more detail Disclosure Requirements: written description, best mode, definiteness written description specification must describe an invention understandable to PHOSITA and show that invention actually invented the invention claimed Ariad WD & Enablement Inventor is investigating ways to retard rotting in fruit. She discovers that after fruits are picked, they continue to produce Vitamin C, which as it builds up in the fruit, causes rotting. She files a patent application that describes this finding and claims: a method of retarding ripening of fruit by reducing Vitamin C expression in cut fruit. The specification does not explain how to reduce Vitamin C expression. What result? Doesnt explain how to make and use. WD and Enablement problem WD & Enablement Inventor notices that mint leaves, even after cut from the stalk stay fresh longer than other comparable plants. She hypothesizes that using an exract of mint will retard the rotting for fruit. She identifies, extracts and purifies 5 compounds from mint that might retard rotting but she has yet to show that any of the compounds actually perform this function (or what function they have). She files a patent application describing the structure of each compound and claiming all 5 compounds. She does not describe how to extract and purify the compounds because she decides not to seek a method patent on the extrawction process. What result? Enablement problem dont know what theyre used for Utility problem if you cant enable, then you generally fail utility WD & Enablement Inventor discovers that dipping a peach in 5% mint oil solution retards rotting. She files a patent application including a detailed description of her successful testing of a peach and claims: 1. A method of retarding ripening of a peach comprising dipping said fruit in a mint oil solution; 2. A method of retarding ripening of an apricot comprising dipping said fruit in a mint oil solution. What result? Standard for enablement PHOSITA knows and understands how to make and use without undue experimentation Have enablement but havent described more, since it didnt include apricot WD & Enablement Inventor discovers that dipping a peach in 5% mint oil solution retards rotting. In 2005, she files a patent application including a detailed description of her successful testing of a peach and claims A method of retarding ripening of a peach comprising dipping said fruit in a mint oil solution. In 2008, while the application is still pending, inventor learns that others are working on similar methods with other fruits and so she amends her claim by replacing peach with fruit. She does not amend the spec. What result? Ariad Method to reduce cytokine production by reducing the binding of NF-kB to its recognition sites Spec identified decoy, dominantly interfering and specific inhibitor molecules? About possession and WD, not about enablement Gentry Gallery v. Berkline Claim 1: 7

fixed console and a pair of control means mounted on the double reclining seat sofa section. Specifcation failed to describe any sofa with controls that were NOT on the console. Stated that location of the controls was an essential element Standard for PHOSITA undue experimentation Description problem because specification was very specific Written Description (Rule) Specification must describe an invention understandable to PHOSITA and show that inventor actually invented the invention claimed Consider: Existing knowledge in field Extent and content of prior art Maturity of science and technology Predictability Watch for: Describing species but claim genus Using only functional language to describe boundaries Continuation Best Mode Must disclose any mode inventor believes to be the best mode of practicing the invention. Depending on scope of invention May need to describe unclaimed elements necessary to practice best mode (ie. Starting materials) Leave out routine techniques known to PHOSITA Patent Reform 2011: While Best Mode is required for patent to issue, failure to disclose Best Mode cannot be used to invalidate patent. Definiteness Can claim terms be given any reasonable meaning? How would PHOSITA understand the terms? Only invalidate claims not amenable to construction or insolubly ambiguous. About, Near, Substantially equal to? HYPO You invent a software program to create user interfaces for electronic kiosks. It gives the author a limited range of pre-defined aesthetically pleasing design choices for element to create an overall aesthetically pleasing layout. Is aesthetically pleasing definite? 817 Patent Compare claims 1&3: Has a base without a slot been adequately disclosed?

35 USC 102: Anticipating, Novelty, Foreign Activity 102: Overview Novelty Events prior to invention date Patent reform 2011: filing date Any event before the invention date will make your invention not new Statutory bars Events one year prior to filing date These will prevent you from filing a patent Priority If there are competing inventors, the patent is granted to the first to invent Patent Reform 2011: First to file 102: Structure Novelty: AGE A, E, G Statutory bars: BCD B, C, D 8

Priority: G G Important Terms Reference: Anticipating event defined in 102 Prior patent, printed publications, public knowledge or use, or sale Foreign and domestic treated differently Critical Date: Invention date (102A & E novelty) 1 year prior to filing date (102B statutory bars). Depends on applicable 102 subsection Date of reference has to be before the critical date To invalidate, effective date of reference must be prior to critical date Consider both critical dates! 102 Reference Must Anticipate To anticipate, reference must disclose every claim element and enable All claim element in a single reference; cannot combine references Elements can be express or inherent Inherency: unstated element is necessarily present in or inevitably flows from reference. Reference enables PHOSITA to duplicate invention HYPO A patent application is filed on May 1, 2005 directed to a chair that claims a back, a seat, 4 legs and a reclining function. The date of invention is Feb 1, 2004. What is the critical date of novelty? Feb 1, 2004 What is the critical date for statutory bars? May 1, 2004 HYPO US patent with an effective date of Jan 15, 2004 that discloses a chair with a back, a seat and 4 legs but does not disclose a reclining function No reclining function, not reference If patent disclosed & claimed a chair with a back, a seat, 4 legs and means to fold flat Can use as 102 reference HYPO A patent application is file don May 1, 2005 directed to a chair that claims a back, a seat, 4 legs and a reclining function. The date fo invention is Feb 1, 2004 A Jan 15, 2004 magazine article describing a chair with a back, a seat, 4 legs and reclining function? If article was dated April 1, 2004? Article comes out after the chair was invented, so not a problem there. Statutory bar is about what have you been doing since invention? Iovate: Express Anticipation What is the critical date Statutory bar: Nov 13, 1996 bc they filed in 1997 Provisional application get something on file to get the date What is the potential reference? 2 mag ads before critical date Does it anticipate? In re Schrieber What about a new use for a known product? Not necessarily make it novel Prior patent qualifies as reference It was before the critical date, so it could potentially anticipate in re Robertson: Claim 1 9

A disposable absorbent article comprising.disposal means comprising a third mechanical fastening means for securing to said first mechanical fastening means claim language trumps specification. In re Robertson: Specification In addition, the disposal means may be either a discrete separate element joined to the diaper or a unitary element that is a single piece of material( For example, one of the first fastening elements may comprise a disposal means if the fastening material is an identical complementary element since the first fastening element of one tape tab may be secured to the first fastening element of the other tape tab.) HYPO: Inherent Anticipation Schering developed the antihistamine loratadine (Claritin) and got a patent on it in 1981. The specification stated the chemical reaction in the human body produced by the ingestion of loratadine has the desired anti-histamine effect. Loratadine does not produce anti-histamine effects and is 99.5% metabolized in the liver in another metabolite named DCL. DCL produces the desired anti-histamine effect. DCL was not mentioned in the patent. Subsequently, Schering is granted a patent on DCL. Geneva develops a generic drug that does not contain loratadine but that metabolizes into DCL once ingested. Geneva argues that Scherings DCL patent is invalid because it is anticipated by the loratadine patent. What result? Anticipates claim Cant have the antihistamine effect without DCL Enabled because you need to ingest Anticipation Must be reference as defined in 102 Reference must be prior to critical date Has to have enablement To anticipate, reference must disclose every limitation of the claimed invention, either explicitly or inherently. Inherent: limitation is necessarily present in or ineveitably flows from reference. PHOSITA does nto have to appreciate or recognize inherent characteristic New use does not make old product patentable reference must teach PHOSITA how to make and use the disputed invention 35 USC 102(a) a person shall be entitled to a patent unless A) the invention 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, or What does it mean to be known or used? Gayler & Rosaire Summary: 102(a) known or used by others Known or used by someone other than inventor Knowledge/ use must be accessible to public (low standard) Single person without restriction enough If invention is abandoned/ never used may still be 102 reference if known. knowledge/ use must be in US known and used in a foreign country? In 1994, WR Grace was granted a US patent on an extract of the neem tree for use as nontoxic pesticide. Farmers in India have been grinding up the seeds of the neem tree, immersing them in water and spraying the resulting emulsion on crops for centuries. Summary: 102 Anticipating Domestic: Prior patent, printed publication, public knowledge, public use or sale Foreign: Prior patent, printed publication (documentary only) Two critical dates! 35 USC 102: Printed Publication, Prior Patents, Priority/ Interferences 102: Overview Novelty Events that occur prior to invention date 10

Statutory Bars Events that occur one year prior to filing date Priority If there are competing inventors, the patent is granted to the first to invent. Patent Reform Act 2011 Expands novelty events (foreign use allowed) May limit statutory bars (no more grace period for many events)? Summary: 102 Anticipation Domestic: Prior patent, printed publication, public knowledge, public use or sale Foreign (pre-reform): Prior patent, printed publication (documentary only) Printed Publication Anticipation event for both novelty (102A) and statutory bar (102B) Must watch the critical dates! Both US and Foreign PP can be used In re Klopfenstein Reference needs to be publicly accessible to the public interested in the art No need to show that someone actually saw it or read it Relevant factors: Display time, expertise of audience, protective measures, ease of copying. In re Lister Publicly accessible if can be located by interested PHOSITA exercising reasonable diligence Statutory bar problem Why cant this be a 102a problem, where he cant anticipate himself? Under 102a, looking for events that occurred prior to invention This problem because Lister could not have disclosed his own invention before he invented it HYPO: Prior Patents (102E) On Jan 1, 2008, inventor 1 files a patent application claiming a blue laser. As part of the application, she describes a tangerine lithium battery but does not seek a patent on it. On april 1, 2008, while the blue laser application is pending, inventor 2 files for a patent claiming a tangerine lithium battery. Every element of this battery is described in the blue laser application The blue laser patent issues jan 1, 2010 Can inventor 2 get a patent on the tangerine lithium battery Jan 1, 2008 would be prior art, therefore inventor 2 could not get a patent Prior Patents as Prior Art: 102E An issued US patent Effective date is US filing date A patent application that has been published by the USPTO (18 mon. from filing) Effective date is US filing date Foreign filings subsequently filed in the US Effective date? How are foreign filings treated under 102E? Paris Convention (1883): Applicants can get priority date of first filing by subsequently filing in any member country within 12 months of first application Ex: I file a patent application in the Japanese patent office on January 1, 2008. If I file a patent application covering the same invention in the USPTO on Dec 31, 2008, my US application will have a filing date (priority date) of Jan 1, 2008 Is Jan 1, 2008 the effective date of the reference as prior art under 102E? Patent obtaining v. Patent defeating Foreign filings treated differently depending on whether date is used to obtain patent (Shield) or defeat patent (Sword) Patent-obtaining: Can rely on the foreign filing date to establish priority, ie date of invention 11

Patent-defeating: cannot rely on the foreign filing date to establish prior art to defeat a patent. Can only use the US filing date. HYPO (In re Hilmer) Hilmer filed a patent in the German patent office on July 31, 1957 and then filed a US application for the same invention on july 28, 1958. January 24, 1957 Habicht filed a patent in Switzerland which disclosed all the elements of Hilmers invention and filed in the US on Jan 23, 1958 Hilmers date of invention (priority date)? German filing date What is his critical date? 1 year before July 31, 1957 To anticipate Hilmer, any prior art reference has to have what effective date? Anything before July 31, 1957 Habichts date of invention (priority date)? Jan 24, 1957 What is the effective date of Habicht as a prior art reference? Cant anticipate Hilmer because its after Hilmer 102E: Summary Prior patent or patent application may constitute prior art under any of three circumstances: An issues US patent Effective date is US filing date A patent application that has been published by the USPTO (18 mon. from filing) Effective date is US filing date Foreign filings subsequently filed in the US Effective date as prior art is US filing date Patent Reform 2011: moved to 102(a)(2) I apply for a patent for a wi-fi enabled wristwatch, comprising elements A, B and C. Does the following anticipate the invention? A wifi enabled wristwatch with elements A, B and C ahd been in public use in Missouri before my date of invention? Yes, pubic use A wifi enabled wristwatch with elements A, B and C had been in public use in Japan before my date of invention? No, in japan A wifi enabled wristwatch with elements A, B and C had been patented in Japan and that patent issued before my date of invention Yes, under 102e printed publication A wifi enabled wristwatch had been patented in Japan before my date of invention, but it did not have elements A, B and C. This watch, however was far superior to my watch, in terms of efficiency, accuracy and safety. No, want all elements and cant combine reference. This one watch has to have a, b, c 2 wifi enabled wristwatches, one with elements A and C and one with elements B and C, had been patented in the US prior to my date of invention. No, but can be used for obviousness A wifi enabled wristwatch with elements A, B and C was described in a publication before I filed my patent application, but after my date of invention Concerned about the publication can not be more than 1 day of filing An article in Wristwatch World, published one week before my date of invention, described a wifi wristwatch. It also described a device with elements A, B and C. But the article did not provide sufficient information for a watch maker to make and operate such a device. No, no enablement Blogger runs I heart watches.com I has only 10 subscribers. Blogger publishes an article 6 months before my date of invention that describes a wifi wristwatch with elements A, B and C and how to make it Yes, need to show publicly accessible to people interested 12

A US patent application for wifi enabled wristwatch that is filed June 30, 2006 and issues on Jan 1, 2009. The patent discloses, but does not claim, elements A, B, and C. Yes, because jan is still before june A patent application for a wifi enabled wristwatch that is filed in Japan on June 30, 2006 and then file din the US on May 31, 2007 under the Paris Convention, and which issues on Jan 1, 2009. The patent discloses, but does not claim, elements A, B and C. Prior art date is may 31, no anticipation 102G Interference: First to invent has priority First to reduce to practice (RTP) usually wins Build prototype, perform process, file patent Priority to second inventor to RTP if 1. First to conceive and 2. Reasonable diligence to RTP starting before other inventors conception date. Any RTP that is abandoned, suppressed or concealed is disregarded Patent Reform 2011 eliminates interferences Conception Completion of all mental aspects of the creation of an invention All claim limitations Specific, definite and permanent idea Minimum experimentation/ research necessary for PHOSITA to RTP Do not need to know that the invention will work for its intended purpose or know how it works If just relying on inventors testimony, corroboration is required Reduction to Practice Actual RTP: 1. Construct and embodiment or perform the process that meets every element of the claim and 2. The embodiment/process must operate for its intended purpose sufficient workability required but not a viable commercial embodiment inventor must recognize that the testing was successful for RTP to occur Constructive RTP Any US or foreign filing that meets 112 Mahurkar v. CR Bard Interference: Who gets priority? First to RTP Even if first inventor to RTP was second to conceive Unless second RTP was first to conceive and there is diligence that begins prior to other inventors conception to RTP Diligence Only relevenat if inventor first to conceive and second to RTP If first to conceive and first to RTP you have priority regardless of how long the gap between Diligence must begin prior to others conception Also applies to constructive RTP, ie, the time it takes to file a patent application Griffith v. Kanamaru Diligence is continuous progress towards RTP without significant interruption. RTP must be complete in a reasonable time in light of the circumstances. Will First to File Reduce Innovations?

Statutory Bars 102 Structure Novelty: AGE Statutory bars: BCD Derivation: F 102(a) Acts by persons other than inventor Known or used, patented or described in a printed publication Critical date is date of invention 13

102(b) acts by inventor patented or described in a printed publication, in public use or on sale critical date is one year prior ot filing Patent Reform Act 2011 Eliminates 102(b) events Only event with grace period is disclosure made by the inventor 102B: on sale bar an invention is not patentable if it was on sale in this country, more than one year prior to the date of the application for patent in the US critical date: one year prior to filign date can be a sale/ offer for sale by inventor OR third party limited to sales activity in the US patent reform 2011: eliminates US requirement Stages of Invention Conception Ready for Patenting Reduction to Practice HYPO: Jane comers up with an idea for a new machine that scans law student essays and automatically grades them. Although she was unsure whether she could make the machine work, she sends various law schools a rough drawing of the machine, and describes how the machine will scan essays, recognize characters, both typed and hand-written, and assign grades in accordance with a pre-programmed formula. On Jan 1, 2009, several law schools agree to pay inventor $10,000 for the machine On Oct 1, 2009, after many months of development and testing, Jane determines the machine would work as she originally proposed and files for a patent on Feb 1, 2010 What is the critical date for the on sale bar? Feb 1, 2009 Was the invention on sale prior to the critical date? Summary: Ready for patenting Proof of RTP: or Drawings or descriptions of the invention sufficiently specific to enable a PHOSITA to practice the invention. Offer for sale? Company develops a new silicon chip that is he subject o fa patent application. Has an offer for sale occurred if prior ot the critical date, company does the following: Sends written intra company communications discussing how to price the new chip No offer Sends a newsletter out to relevant people in the industry entitled whats new @ company and describing the chip and its features under the heading learn more about our highly anticipated, soon-to be released product No offer because theres no bargain Accepted requests for samples of the chip No offer Accepted (but did not solicit) POS from prospective customers prior to commercial release of chip. These Pos were kept in a file labeled New product/ not booked/ advise customer upon release No offer Plumtree Software v. Datamize 1994: MA completed development of authoring tool that could be used to create kiosks (RTP) 1/17/95: MA gave presentation to reps at Ski Industry of America a trade show 1/25/95: SIA sent letter to MA confirming MA would provide kiosk at trade show in exchange for SIAs waiving the $10K sponsorship fee 2/27/95 Critical Date March 1995 trade show held in Vegas where MA kiosk was displayed HYPO 14

Inventor invents a bike lock called Gorilla Lock and files for a patent on it. Inventor entered into the following agreement with Factory prior to the critical date: License: Inventor grants factory the right to manufacture Gorilla Lockadn distribute Gorilla Lock in the US. Factory shall pay Inventor $10K for the rights enumerated herein. Not sale because its a license Inventor grants factory all right, interest and title to the Gorilla lock patent, currently pending. Factory shall pay inventor $10K for the rights enumerated herein. Not sale because not invention Not selling the product itself. Summary: On sale Bar 102A Known or used v. 102B Public Use 102A: known or used by someone other than inventor (Rosaire) 102B: can be placed into public use by third party OR by the inventor herself For both: just need to show non secret use Egbert v. Lippmann The Corset case Just one article in use is enough Just one person is enough, as long as that use is without limitation, restriction or secrecy Some inventions are naturally hidden; use need not be visible to public Public Use Inquiry Was the invention used by even an single person without limitation, restriction or obligation of secrecy? How much control did the inventor retain over the device? HYPO: Secret Processes I invent a novel process to purify vodka that is so effective that it practically eliminates hangovers. I use the process to produce and sell NO Regrets Vodka. The Product is an instant commercial success. I keep the process completely secret, even from my employees. 13 months after it is released, I file for a patent on the process. What result? HYPO: Process Claims A non-secret use of a claimed process to produce a commercial product is a public use for both 102A and 102B An inventor is barred under 102B from obtaining a patent on a secret process if the inventor has sold a product made from that process before the critical date. To bar a third party, the secret process must be apparent from the product. Slanket On Jan 1, 2006, I invent a novel blacket with sleeves. Excited by my invention, I immediately crochet several of them and send them out as gifts for my friends. My friends take them everywhere and love them. Consider the following: Feb 15, 2007, I file a patent application for my invention Critical date Feb 15, 2006 Still public use, doesnt have to be commercial, as long as use without limitaition On July 1, 2006, my neighbor independently creates a similar blanket with sleeves and gives them to his friends and family to use. On july 15, 2006, I file a patent application for my invention Invention date 1/1/06 Other critical date: July 15, 05 Doesnt make a difference because the neighbor was July 1, 2006 Public use happened inside the grace period On Dec 15, 2005, an article appeared in a Japanese lifestyle magazine describing a blanket with sleeves jus tlike the one I invented. I do not read Japanese and I never saw the article. Oin Mar 15, 2006, I file a patent application for my invention. Invention date: Jan 1, 06 Other critical date: mar 15, 05 Japanese: Dec 15, 05 Perhaps anticipation problem *** Print Week 10 last 2 slides 15

Statutory Bars: On Sale & Public Use Experimental use exception City of Elizabeth v. American Nicholson 102B problem because its the inventor itself concerned about filing date Experimental Use by Inventor: Lisle Extent of Control? Records? Awareness of test? Experimental use by Inventor Bona fide effort to perfect the invention or see if it works for intended purpose Amount of control retained by inventor over the alleged testing; Experimental records; Awareness by purported testers that the testing is occurring Just because you dont sell it doesnt mean you are experimenting But, commercial exploitation of invention usually means NOT experiemental Experimental Use by Infringer: Merck 271E1: can use patented invention for uses reasonably related to the development and submission of information under the Federal law which regulates the manufacture, use or sale of drugs HYPO Assume two inventors, Hare and Tortoise, conceive at the same time. Hare files an application without testing. Tortoise first tests carefully until certain of success and then files his application. Assuming both applications comply with 112, who gets patent? What if tortoise was the first to conceive? HYPO In 2006, John develops a process for producing flexible adhesive tape. John keeps the process a secret but sells the tape commercially. On Jan 1, 2010, Al files a patent application on a process for making flexible adhesive tape that is similar to Johns process Is Als patent barred or anticipated under 102? Can John file for a patent on his process on Jan 1, 2010? HYPO Alice, an engineer, and her lab assistant Beverly, work for a large American auto manufacturer. Alice sets out to build an improved airbag. Alice begins her experiments in Jan of 2002. She knows other car manufacturers all over the world are working on similar experiments. Late on the evening of April 14, 2002, just after Beverly has left for the night, Alice hits on what she believes to be the right mix of material and design. After some delays by the legal department of the car manufacturer, a patent is filed June 15, 2003. Would any of the following events anticipate or bar the patent? Alices employer began experimentation with the airbag in May of 2002. Alices employer installed the new airbag into its show cars displayed at the annual Detroit Auto Show. The show was covered by press from around the world in the period between June 1-14, 2002. The airbage was nto described or deployed at the show. Alices employer begins a widespread campaign to sell cars with its new airbag. The ad campaign begins July 16, 2002 and the first sale of a car with the new airbag is July, 20, 2002. The car sold is a 2003 model. In early 1999 Charlie began tinkering on the airbag in his own 1992 American car. He came up with an improved version that he installed in his car in Nov 1999. When his daughter turned 16, he gave his old car to her, and bought a used 1994 American car for himself. He installed one of his airbags in that car as well. Assume Charlies airbag has all the elements of the claimed invention. HYPO Edna develops a mechanical means for turning pages using a foot pedal. Edna broadly claims her invention to cover a variety of means for turning pages using a Obviousness origin of obviousness: Hotchkiss v. Greenwood the improvement is the work of the skillful mechanic, not that of the inventor 16

103 a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains patentability shall not be negatived by the manner in which the invention was made even if it was accidental, as long as it wasnt obvous Graham v. John Deere The scope and content of the prior art are to be determined Differences between the prior art and the claims at issue are to be ascertained; And the level of ordinary skill in the pertinent art are resolved Obviousness Framework Determine scope and content of prior art Compare differences between the prior art and invention Determine level of ordinary skill in the pertinent art Determine whether claims as a whole would have been obvsious to a PHOSITA at time of invention 103 v. 102 novelty 102 search is wide, test is narrow can look anywhere for prior art limited to consideration of single reference strict identity 103 search is narrow, test is wide analogous art only does not require strict identity can combine and/ or improve upon multiple references even if an invention is novel it can be obvious Nonobviousness framework Determine scope and content of prior art Must be analogous art Usually printed publications & prior patents Differences between prior art and claims? Element by elemnet identity between claim and prior art not required Determine level of ordinary skill in art Would claims have been obvious to a PHOSITA at the time of the invention? Evaluate secondary considerations US v. Adams Magnesium electrode + cuprous chloride electrode + water electrolyte What was in prior art? Water battery with Zinc + silver Cl Can substitute magnesium, cuprous chloride How is the invention different? Are those differences obvious? HYPO: Obviousness Jane invents Feb 2010 Jane files Sept 1, 2011 Obviousness: the KSR Test KSR v. Teleflex KSR: Prior Art Rixon: Adjustable pedal with electronic sensor on footpad (not fixed). Wire known to suffer chaffing. Smith: Electronic sensor on fixed part of pedal (support structure) rather than footpad to prevent wear and dirt Asano: Adjustable pedal with fixed pivot point 17

Engelgau patent: adjustable pedal with sensor attached to fixed part of pedal Invention often combine known elements Just predictable use of prior art element according to their established functions Consider all known problems in field PHOSITA has creativity Sometimes obvious to try really is obvious Be aware of hindsight bias but not a slave to it Compare: the Inquiry Would a pedal designer of ordinary skill, faced with the wide range of needs created by developments in the field have been led to upgrade the former mechanical implementations with an electronic sensor? Compare old inquiry: would a pedal designer of ordinary skill have had some specific reason to combine the cited references and be led by those references to upgrade the former mechanical implementations with an electronic sensor? KSR: the test? TSM test ok but dont apply rigidly Examine: Interralted teachings of multiple patents Design and martket demands Scientific literature Background knowledge and creativity of PHOSITA Needs and problems outside of the field of endeavor Obvious uses of items outside of their primary purpose What is likely to be obvious (USPTO)? Combining prior art elements using known methods to yield predictable results Simple substitution of a known element for another to yield a predictable result Use of a known technique to improve similar devices, methods or processes in the same way Applying a known technique to a known device, method or product ready for improvement to yield predictable results Known work in one field of endeavor that prompts predictable variations in the same field or other fields Some teaching, suggestion, motivation in the prior art that would have led PHOSITA to the invention and that the PHOSITA would have had a reasonable expectation of success. Leapfrog Enterprises v. Fisher- Price Obvious? Bevan O/B/V/I/O/U/S/ SSR O/OBVIOUS Leapfrog OBVIOUS/ OB/VI/OUS/ OBVIOUS HYPO: Obviousness Jane invents Feb 2010 Jane files Sept 1, 2011 Obviousness: Further Application Who is PHOSITA? When constructing a PHOSITA consider: Inventors own skill level Problem the patent addressed In re Icon Health & Fitness The claim limitation at issue: A gas spring connected between the tread base and the upright structure to assist in stably retaining said tread base in said second position Do any of the prior art anticipate? No, because when talking abut anticipating, you need every element claimed Analogous Examines based on 18

 Logically would have commended itself to an inventors attention in considering his problem Is it obvious? Prior art references: Damark: ad for folding treadmill discloses every limitation except gas springs Teague: describes bed that folds up, uses novel dual action spring rather than the prior single action springs. Anticipation? Analogous? Obvious? 103: analogous art references from same field of endeavor, regardless of problem addressed; or references outside of field reasonably pertinent to particular problem inventor trying to solve KSR: includes art outside the field dealing with a different problem, that would be logical to consult. Scope not clear. Iron Grip Barbell v. USA Sports Secondary Considerations: Commercial success Long felt need/ failure of others If there was a long felt need, and no one addressed it, then it suggests nonobviousness Copying by others They couldnt find a way to do it themselves but to copy Licensing/ Acquiescence Why did Iron Grip lose on secondary consideration? Wrigley Parrish Use of WS3 and WS 23 as cooling agents in gum Luo Use of WS3 with menthol in gum Invention: Invention claims WS 23 with menthol in gum HYPO: Is the invention obvious? Would PHOSITA, faced with the wide range of needs created by developments in the field, have been led to improve a baseball with these markings? Secondary considerations? Commercial success Licensing Copying Long felt need *** Slide 14 last slide Claim Interpretation: General Principles Enforcement 271: Patentee can prevent anyone from making, using, offering to sell, selling, or importing the patented invention strict liability defenses non infringement patent claims do not read on accused device invalidity failure to meet patentability requirements subject matter, disclosure, novelty, obviousness why do we need to construe claims? Infringement 1. Construe claims; 19

2. Compare accused device to claims to determine whether infringement occurred necessary to determine if claim is valid 112 disclosure requirements 102 anticipation/ statutory bar the nature of language makes it impossible to capture the essence of a thing in a patent application. Festo, 535 US at 731 specialized terms in the field open ended, relative terms spaced apart sufficiently charged Markman Judges construe claims Markman (claim construction) hearings before the end of discovery Patent local rules, see N.D. Cal. reviewed by the federal circuit de novo controversial Sources of Information Intrinsic Patent document Prosecution history (file wrapper) Extrinsic Dictionaries and treatises Expert testimony What is the proper weight of each source? Vitronics: Intrinsic evidence is primary. Only use extrinsic evidence if cannot resolve genuine ambiguity Texas digital Dictionaries & treaties are primary, then turn to specification Phillips v. AHW At what angel do the baffles have to be? Ordinary and customary meaning of a claims term is 1. The meaning that term has to a PHOSITA 2. At the time of the invention claim construction methodology claims specification prosecution history extrinsic evidence claims context of the term steel baffles suggests baffles alone is not steel similar usage of term in other claims claim term should have same meaning throughout the patent claim differentiation every claim presumed to have different scope, so a dependent claim with a specific limitation suggests the independent claim does not have that limitation preamble generally not a limitation unless necessary to the claim preamble is limitation if necessary to give life, mmeaning and vitality to claim example: if terms in the claim can only be understood by reference to preamble specification terms must have support or antecedent basis in specification specification can specially define a term and/or limit scope of claim if specification provides specific embodiments, is the claim limited to those embodiments? 20

 Is patentee setting out specific examples to explain how to make and use invention, or limiting claims to disclosed embodiments? Prosecution history (file wrapper) File wrapper: entire history of application, including all amendments, statemtns, replies Patentee may explain scope of invention or her understanding of invention Ongoing negotiation, so should not control clear language in patent Extrinsic evidence Dictionaries and treatises Expert testimony How can it help? What are the risks? Literal Infringement Enforcement 271: Patentee can prevent anyone from making, using, offering to sell, selling, or importing the patented invention strict liability Defenses: Non infringement Patent claims do not read on accused devise Invalidity Failure to meet patentability requirements Subject matter, disclosure, novelty, obviousness Invalidity Patents are enforceable from the date of issue and presumed valid under 35 USC 282 Invalidity must be proven by clear and convincing evidence Microsoft v. i4i Standard applies to questions of fact Infringement Analysis Construe claims Compare to accused device Must use a claim chart Accused device must possess each and every limitation recited in claim, or its equivalent Larami v. Amron Does Laramis Super Soaker 20 literally infringe claim 1 of the 129 patent? Claim 1 A toy comprising an elongated housing (case) having a chamber therein for a liquid (tank) Spec A chamber or tank 2 for liquid within the confines of the barrel Infringement under Doctrine of Equivalents infringement analysis construe claims compare to accused device must use a claim chart does accused device possess each and every limitation recited in t least one patent claim, or its equivalent? Literal infringement hypo: A writing implement comprising: A wooden cylinder with a hollow core; A cylinder of graphite in said hollow core; A small cylinder of eraser material attached to one end of the wooden cylinder Which, if any, of the following infringes literally? An octagonal pencil with a eraser Not literal 21

A pencil with an eraser and a body made of plastic Not literal A pencil without an eraser Not literal, missing a claim the eraser Doctrine of equivalents Graver Tank v. Linde DOE: device performs substantially the same function in substantially the same way to obtain the same result Alkaline earth metal silicate Unionmelt: Ca + magnesium Lincolnweld: Ca + Manganese DOE Framework Isolate claim limitation that is not met literally Any restrictions on DOE that bars application? (ie. PHE) Are differences between claim limitation and accused device insubstantial? Element of accused device performs 1. Substantially same function 2. In substantially same way 3. To achieve substantially same result do not consider accused infringers state of mind assess equivalence at time of infringement Equivalent? Claim 1: A toy comprising an elongated housing case having a chamger therein for a liquid tank Does a water gun with detachable water tank outside a housing infringe under DOE? Consider design, manufacturing & use Manufacturing perspective, its harder to have the chamber inside rather than outside Warner Jenkinson v. Hilton Davis DOE has taken on a life of its own, unbounded by the patent claims. DOE must be applied to each individual element of claim, not to inveiton as a whole Cannot apply DOE to eliminate any element DOE Hypo A writing implement comprising: A wooden cylinder with a hollow core; A cylinder of graphite in said hollow core; A small cylinder of eraser material attached to one end of the wooden cylinder Do these infringe under DOE? A wooden cylindrical pencil with an eraser? More like a literal than DOE A wooden square tube pencil with an eraser Not literal, DOE maybe A pencil with an eraser and a cylindrical body made of plastic Not literal Function is the wooden cylinder, as thats the part thats different. Focus on that as the function and assess DOE A wooden eraserless pencil with special graphite that easily erasers with a swipe of the hand Every element needs to be there, either literal or DOE No equivalence, because theres nothing thats equivalent to the erasing material. Prosecution History Estoppel Surrender of subject matter during prosecution precludes recapturing any part of that subject matter, even if it is equivalent to the matter expressly claimed. 6-9 pH limit added Infringement Analysis Construe Claims Compare to Accused Device 22

Must use a claim chart Does accused device possess each and every limitation recited in at least one patent claim, or its equivalent? DOE framework Isolate claim limitation that is nto met literally Any restrictions on DOE that bars application to the limitation? (ie. PHE, Public Dedication Rule, Specific Exclusion/ All Limitation Rule) Is claim limitation equivalent to corresponding element in accused device? Are differences between claim limitation and accused device insubstantial? Element of accused device performs 1. Substantially same function 2. In substantially same way 3. To achieve substantially same result do not consider accused infringers state of mind assess equivalent at time of infringement Warner Jenkins Booth patent disclosed an ultrafiltration process at a pH above 9.0. So what did the applicant do in response? Added at a pH from approximately 6.0 to 9.0 If a narrowing amendment was made to claim during prosecution, PHE may apply Must determine reason for amendment. No reason = presume PHE applies If PHE applies, no DOE Festo PHE applies when any narrowing amendment is made to satisfy Patent Act unless: Equivalent unforeseeable at time of amendment; Equivalent tangential to reason for amendment Alleged equivalent and narrowing amendment implicate entirely different aspects of the invention some other reason that applicant could not reasonably have been expected to literally claim alleged equivalent (very narrow). PHE: Summary Was narrowing amendment made? NO: OK to use DOE YES: What was reason for amendment? No reason: assume it was for patentability If amendment made for patentability, presume PHE applies, unless: Unforeseeable Tangential Some other reason Public Dedication Rule Specification states: an aluminum sheet is preferred, but other metals, such as stainless steel, may be used. Patent claimed a sheet of aluminum RES used a sheet of steel and J&J claimed infringement under DOE. Should DOE apply? Specific Exclusion/ All Limitaiton Rule Summary of Invention: the present invention has a longitudinally extending coaxial inflation lumen Coaxial structure is the basic sleeve structure for all embodiments of the present invention contemplated and disclosed herein Spec notes double lumen catheters have disadvantages solved by coaxial configuration Claims cover both double and coaxial Do double lumen catheters infringe? 23

Summary: DOE Limitaitons Prosecution History Estoppel Public Dedication Rule: If subject matter disclosed but not claimed, unclaimed subject matter is public Specific exclusion rule: Element that is specifically excluded from claim cannot be captured through DOE All limitations rule: Each claim element is material and cannot vitiate any element Indirect Infringement Contributory Aid & abet infringer, i.e., supply component of patented invention Alleged infringer made or sold component Component has no substantial, non-infringing use (non staple) Alleged infringer knows of non-staple nature of component Alleged infringer engaged in conduct within U.S. that contributed to anothers direct infringement Inducement Facilitating infringement, i.e., providing instruction 271(b): Whoever actively induces infringement of a patent shall be liable as an infringer Specific intent to induce infringement, not just knowledge of acts or possible acts Limits on the Right to Exclude First Sale Doctrine, Tying, Field of Use Restrictions First Sale Doctrine (Exhaustion) Patent owners rights with respect to patented product end with its sale. Purchaser can use, repair, modify, discard or resell the product free of the patent First Sale Doctrine: Limitation Repair & Reconstruction Cannot make a new article Can preserve life of original article Even if it requires complete disassembly and reassembly Succeeding owners can also repair Rights can be limited by contract Patent Misuse Affirmative defense that renders patent unenforceable. Unenforceability lasts only as long as the improper conduct. Common misuse scenario: Tying: Conditions license under the patent to purchase of a separate, non-patented product 35 U.S.C. 271(d) Only misuse if tying sale to a staple product and if can show patentee has market power as well. Not misuse to tie sales to nonstaples. Single Use Only Right to repair can be restricted by contract Must determine if restriction is within the patent grant Defenses to Infringement Inequitable Conduct All individuals associated with filing and prosecuting patents have duty of candor with PTO. 37 CFR 1.56 (Rule 56) Must disclose all information material to patentability. Violation of duty of candor is inequitable conduct Renders entire patent unenforceable Cannot be purged (compare misuse) Asserting Inequitable Conduct In court: Raised as an affirmative defense 24

Must be proven by clear and convincing evidence If proven then court may refuse to enforce patent By PTO: Can take disciplinary action or withdraw application Inequitable Conduct Factors Materiality + Intent to deceive Clear and convincing evidence Remedies Injunction Courts . . . may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable. Permanent Injunctions 4 Factor Test Plaintiff suffered irreparable injury; Money damages are inadequate; Considering balance of hardships between plaintiff and defendant an injunction is warranted; Public interest would not be disserved by an injunction. Money Damages Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty . . . The court may increase the damages up to three times the amount found or assessed. Damages Lost Profits Can be higher than reasonable royalty but difficult to prove and calculate NPE usually ineligible Must have causal connection between the infringement and unearned profits. Panduit Test How to show causation? Demand for patented product Assumed if competing infringing product exists Products dont need to be identical but should be interchangeable Absence of acceptable non-infringing substitutes; Is there a substitute in the market? Manufacturing and marketing capability to exploit demand; Profit patentee lost due to infringement Market Share Approach Patentee & infringer compete in the same market; Even though non-infringing substitutes are available, patentee proves it wouldve made sales but for infringement Can get lost profits based on market share. EX: Wrigleys has 40% of the gum market then it may be able to collect 40% of infringers sales Reasonable Royalty If LP too difficult to prove Is there an established royalty? There are 15 Georgia Pacific factors to consider. The courts consider GP factors in context of a hypothetical negotiation between the parties if there was no infringement (Willing buyer-willing seller rule). Important Factors Actual royalties paid by others Rate paid by the infringer for comparable patents Whether invention promotes other sales 25

The portion of the profit that should be credited to the invention vs. other elements. Advantages of the patented invention Availability of noninfringing substitutes Industry licensing practices Treble Damages Willfulness Enhanced damages up to 3x available with willful infringement. Infringer acts despite an objectively high likelihood of infringement (Objective recklessness) Common scenarios: Copying anothers invention Conducting inadequate investigation into assertion of patent infringement Patents and Public Health ANDA Process (Simple)

ICI v. Bar

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Settlement including reverse payment Is settlement improper because it was entered into after patent invalidated? Are reverse payments per se unlawful? Even if lawful, wasnt $21M in this case excessive? Lawful, unless: Patent procured by fraud; or Underlying suit was baseless; or Extends monopoly beyond the patents scope TRIPS Trade Related aspects of IP Rights Part of WTO Any country that wishes to join the WTO must agree to TRIPS TRIPS contains strong enforcement provisions that authorize border seizures, trade sanctions and criminal sanctions TRIPS and Patent Rights Patents must be generally available for all inventions if they are new, useful and nonobvious. Can still exclude methods of medical treatment and inventions that violate morality Terms like invention new nonobvious are left undefined

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