Innovations: reading a patent


Instructions: All members should do everything below and be fully prepared to discuss all questions, whether or not they are assigned to lead discussion. Note that the assignment includes 1) activities, 2) questions, and 3) links. Be sure you’ve done all the activities, answered all the questions, and read all the linked pages.

Find a patent: After reading the cases and Section 112 (assigned for the most recent class), find the ‘036 patent. Do not use Google or a search engine. Follow the steps below.

  1. Go to the United States Patent and Trademark Office website:
  2. Click on “Search for patents” (lower left-hand of page).
  3. Select “Quick Search” and search for 5,443,036 in the field “Patent Number.”
  4. You should get a plain-text version of the ‘036 patent for “Method of exercising a cat.” You’re getting there, but you’re not done yet.
  5. Click on the red “Images” button to get the first page of the patent’s PDF. You may have to install a plugin.
  6. To download the full document, click the “Full Pages” button on the left.
  7. Save the PDF.
  8. Print it out, read it carefully, mark it up, bring it to class.

Cover. Who are the inventors of the ‘036 patent? Is an assignee noted? Why or why not (speculate)? Who was the examiner? Why is no attorney listed? If not, why not (speculate)?

Duration. When was the patent filed? When would it normally expire (assuming it didn’t expire for failure to pay maintenance fees, or wasn’t otherwise abandoned or invalidated prior to a normal expiration date)?

Note: This patent was filed prior to June 8, 1995. That means that its term would have been determined by prior law: “All patents (other than design patents) that were in force on June 8, 1995, or that issued on an application that was filed before June 8, 1995, have a term that is the greater of the ‘twenty-year term’ or seventeen years from the patent grant.” This information can be found in the MPEP (Manual of Patent Examining Procedure), section 2701. Look it up, The MPEP is used by USPTO patent examiners. A similar type of manual, the Trademark Manual of Examining Procedure (TMEP), is used by USPTO trademark examiners. See Look it up.

Follow-up duration question. What if the patent was instead filed on Jan. 1, 2018 and the patent issued Jan. 1, 2019? When would the patent normally expire, assuming it wasn’t invalidated and that all maintenance fees were timely paid?

Subject matter. What was patented? A process, machine, manufacture, or composition of matter? A “new and useful improvement thereof”? Is this patentable subject matter under section 101? Why or why not?

Prior art. See the “References cited” on the cover page (p. 1). These are “prior references” or “prior art” that the inventor knew of, and any additional prior art the PTO found. Note that there may be significantly more prior art out there besides what is cited in the patent. As we’ll later learn, such prior art may serve to invalidate a patent for a lack of novelty (section 102) or due to obviousness (section 103). Prior art is not just patent documents; it can be a wide variety of things such as news articles, TV broadcasts, films, articles, websites, and things publicly published, used, or sold. We’ll discuss prior art in more detail later.

  • Can you think of things that might qualify as prior art?
  • Where might you look for them?
  • Do you suspect this patent was non-novel or was obvious in light of prior art? Why?

Drawings and specification. Examine the drawings and numbers. Read the written description carefully. Note that the numbers used in the drawings are also used in the written description.

  • Activity: explain the drawings by using the written description on page 3, col. 1 and 2.

Enablement. Pursuant to section 112, 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, or with which it is most nearly connected, to make and use the same.” The “person skilled in the art” is known in patent law as the PHOSITA (person having ordinary skill in the art). The PHOSITA is important to Section 112 enablement as well as Section 103 obviousness.

  • What is the relevant “art” here (in regards to having “skill[] in the art”)?
  • Describe the PHOSITA, i.e., the typical person who would make and use this invention?
  • Does this patent allow (i.e., “enable”) your PHOSITA to be able to “practice” the patent (i.e., make or use the invention)? In other words, is this a sufficient instruction manual for your PHOSITA?

Best mode. The “preferred embodiment” a/k/a “best mode” is also 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.

  • Where is the “best mode” located in the patent?
  • Describe the best mode.

Claims. The claims are the heart of any patent, its metes and bounds.

  • How many claims are there?
  • What is the text of the preamble? The transitional phrase? The body? See here for guidance.
  • Are the claims open or closed? See here for guidance.
  • Are some claims independent? Are some dependent on others? Which?
  • In what ways do the dependent claims further limit the scope of the independent claim?
  • Does the written specification help in giving meaning to terms used in the claims? How?

How in the world did this patent issue? Should the USPTO have issued this patent? Why or why not?

What happened to the patent? Did this patent run for its maximum potential duration? To find out, go to the public PAIR system and search for the ‘036 patent. What was the patent’s fate?

Posted Jan. 19, 2017