Read:
- You were previously assigned 35 U.S.C. 100 and 101. Read them again. Also read 35 U.S.C. 112.
- Read David V. Radack, Reading and Understanding Patent Claims.
- Carefully read U.S. Patent No. 6,263,732 for the OXO measuring cup. We’ll use that to discuss a number of patent-related issues.
- Take a look at the actual product and watch the video about the cup. (Video via scrolling of images to left).
Be prepared to discuss the following questions.
- Cover. Who is the inventor? The assignee? When will the patent expire?
- Subject matter. What is patented? A process, machine, manufacture, or composition of matter? A “new and useful improvement thereof”? What other patents might arguably arise from this measuring cup? Be expansive in your thinking.
- Prior art. See the “References cited” (p. 1). These are “prior references” or “prior art” that the inventor and PTO know of. Novelty and nonobviousness are measured against the preexisting technology, or “prior art.” There may be other prior art out there beyond that cited in the patent. As we’ll later learn, such prior art may serve to invalidate a patent for lack of novelty (section 102) or due to obviousness (section 103). Can you think of things that might qualify as prior art? Where might you look for them? Find an example, bring it or the link to class.
- Novelty/nonobviousness/utility. What is unique about the OXO measuring cup? We haven’t yet studied these terms, so I’ll ask you in lay terms: do you think the cup is novel, nonobvious, and useful? Why?
- Specification. Examine the drawings and numbers. Note that the numbers are used in both the drawings and the written description (together, the “specification”). Use the numbers in the drawings on pages 1-3 to decipher the written description on pages 4-5. Be ready to discuss both.
- Enablement. The specification must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains.” The “person skilled in the art” is known in patent law as the PHOSITA (person having ordinary skill in the art). What is the relevant “art” here? Does this patent allow (i.e., “enable”) such a person to be able to “practice” the patent (i.e., make or use the invention)?
- Best mode. The “preferred embodiment” a/k/a “best mode” is required by Section 112. The inventor must “set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” That doesn’t mean the best mode in the world, just the best one known to the inventor.
- Claims. The claims start on page 5 (“What is claimed is . . . .”). What does the patent claim? Does the written specification help in giving meaning to terms used (such as “ramps”)?
Posted Jan. 12, 2024