1. Module IIICONTACT SEMINARSROUND 1PATENTABILITY OF INVENTIONS : US and EuropeanperspectivesSWAPNA SUNDARCEO, IP DOME – IP STRATEGY ADVISORS 2. 11/25/20122Agenda• US Patent Regime1.Patentability of Inventions2.Utility3.Anticipation4.Obviousness5.Enablement• European Patent regime• Questions 3. 11/25/2012 3 • US PATENT REGIME I.Title 35 USC & Title 37 CFR II. Patentability 4. 11/25/20124Title 35 of the US Code governsPatent law Consists of 37 chapters (376 sections of which 149 of are used). Title 35 has four parts: Part I—USPTO Part II—Patentability of Inventions and Grant of Patents Part III—Patents and Protection of Patent Rights Part IV--Patent Cooperation Treaty 5. 11/25/20125CFR Title 37 – Patents, TM and © Code of Federal Regulations is the codification of the general and permanent rules and regulations. CFR must have an "enabling statute‖. USC is a codification of legislation; CFR is administrative law. USC precedes the CFR and contains statutes enacted by Congress. CFR spells out in further detail how the executive branch will interpret the law. 6. 11/25/2012 7. 11/25/2012 8. 11/25/2012 6Patentabililty: Eligibility for grant The Applicant must be the inventor. Patentable subject matter (section 101) Novel and the application for a patent on the invention must be timely (section 102) The invention must be non-obvious (section 103) The invention must be sufficiently documented (section 112) 9. 11/25/20127Patents issued by the USPTO-UTILITY PATENTS - generally permits patentee monopoly over making, using, or selling the invention for 20 years from the date of patent application filing, subject to the payment of maintenance fees.-DESIGN PATENTS-PLANT PATENTS-Reissue patents, defensive publication, statutory inventionregistration 10. 11/25/2012 835 USC 101 Inventions patentable Whoever 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 therefor, subject to the conditions and requirements of this title 11. 11/25/20129What is patentable – (102 & 103)An invention must belong to one of these classes:a. Machine (eg. Mechanism with moving parts)b. Article of manufacture (eg. Hand tool or diagnostic kit)c. Composition of matter (eg. Drug)d. Process (eg. Of making nanotubes) PROCESS defined in 35 U.S.C. 100: - means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. 12. 11/25/201210What is patentable Contd.e. New use or improvement of existing inventionf. Modified living organism (eg. Transgenic rice)g. Isolated or purified natural materials (eg. Purified proteins) - Mathematical formulae, chemical elements, laws of nature are not patentable. Gene Patents are patent on a specific isolated gene sequence, its chemical composition, the processes for obtaining or using it, or a combination of such claims. Gene patents are a part of the broader category of biological patents. 13. 11/25/2012 11 CasesFunk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127(1948): Kalo got patents on packaged mutually non-inhibitoryrhizobia species for inoculation into the roots of leguminousplants and for the process. Held unpatentable as:―qualities of these bacteria…are manifestations of laws ofnature‖―aggregation of species‖ISOLATES: The first patent for a human product was grantedon March 20, 1906 for a purified form of adrenaline. It waschallenged and upheld in Parke-Davis v. Mulford [2] JudgeHand argued that natural substances when they are purifiedare more useful than the original natural substances. 14. 11/25/201212 • US PATENT REGIME I. Utility II. Novelty III. Non-obviousness 15. 11/25/201213Utility 35 USC 101Invention must demonstrate identifiable benefit and use; mustexpress a specific, credible, and substantial utility.• Operability whether the invention actually works oraccomplishes the utility that the inventor claims• a beneficial use requires that the patented invention ―not befrivolous or injurious to the well-being, good policy, or soundmorals of society‖. An invention is ‗useful‘ under section 101 ifit is capable of providing some identifiable benefit.• practical use: in Brenner V. Manson a novel process formaking a known steroid did not satisfy the utility requirementbecause the patent applicants did not show that the steroidserved any practical function. 16. 11/25/2012 14Utility dilutedJuicy Whip, Inc. v. Orange Bang, Inc. dealing with a juicedispenser that arguably deceived the public into believingthat the liquid seen in the attached reservoir was that whichwas being dispensedGamblingToys to enhance sexual pleasure 17. 11/25/201215NoveltyPatent can be granted to an invention unless it(a) was known or used by others in this country, or patented ordescribed in a printed publication in this or a foreign country,before the invention thereof by the applicant for patent, or(b) was patented or described in a printed publication in US oranother country or in public use/sale in this country, more than 1year prior to the date of the application for patent in the US(c) Was abandoned by the applicant(d) patented in another country

European and US Patent Law

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