Sources
- Randall R. Rader, John R. Thomas, Martin J. Adelman, and Harold C. Wegner, Cases and Materials on Patent Law, 2d edition (2002), p. 541–542.
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A transitional phrase, in United States patent law, is a phrase that links the preamble of a patent claim to the specific elements set forth in the claim which define what the invention itself actually is. The transitional phrase acts as a limitation on the claim, indicating whether a similar device, method, or composition infringes the patent if it contains more or fewer elements than the claim in the patent.
There are three kinds of transitional phrases: open, closed, and hybrid.
A closed transition usually uses the words "consisting of.” Use of this phrase limits the preamble to exactly what follows and nothing more. An example would be a patent claim for a pencil, which might say in the preamble "a writing device", followed by the closed transition "consisting of", and concluding with a description such as "a cylindrical piece of lead, graphite, or another material similarly capable of leaving a mark when drawn against a surface, and a second surrounding material encasing the first". A third party who sold pencils including both a cylinder of writing material and a casing material, but added to his pencils an eraser fixed to one end, would therefore not be in violation of the patent. Use of such a transition makes it easy for a competitor to compete with the patented product without infringing it, because it allows the competitor to sell a similar device so long as the competitor makes an addition to what is claimed. However, it also may assist the patent owner in avoiding prior art, which might otherwise block the patent from issuing.
An open transition usually uses the word "comprises" or "comprising". This is the broadest form of transition, as it does not limit the preamble to whatever elements are identified in the claim. If the above patent used the word "comprising" instead of "consisting of", then the third party's pencil-plus-eraser would be infringing (assuming that the patent is otherwise valid).
A third kind of transition, the hybrid transition, uses the phrase "consisting essentially of". The effect of this transitional phrase is to leave the claim "open" to include additional elements, but only if those additional elements do not materially affect the basic and novel characteristics of the claimed combination. In this instance, the pencil with the eraser added might still not be infringing, but a pencil with a fin or a non-functional button would still infringe, because the thing that was added would serve no purpose material to the claimed functions of the pencil. This language assists in avoiding prior art, but is broad enough to capture imperfect attempts to copy the patented device.
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An eraser is an article of stationery that is used for removing marks from paper or skin. Erasers have a rubbery consistency and come in a variety of shapes, sizes and colours. Some pencils have an eraser on one end. Less expensive erasers are made from synthetic rubber and synthetic soy-based gum, but more expensive or specialized erasers are made from vinyl, plastic, or gum-like materials.
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. In many countries, a use is required to be commercial to constitute patent infringement.
In a patent or patent application, the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of the utmost importance both during prosecution and litigation alike.
Novelty is a requirement for a patent claim to be patentable. An invention is not new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier patent application. The purpose of the novelty requirement is to prevent prior art from being patented again.
The doctrine of equivalents is a legal rule in many of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention. U.S. Judge Learned Hand has described its purpose as being "to temper unsparing logic and prevent an infringer from stealing the benefit of the invention".
The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".
The Patent Reform Act of 2005 was United States patent legislation proposed in the 109th United States Congress. Texas Republican Congressman Lamar S. Smith introduced the Act on 8 June 2005. Smith called the Act "the most comprehensive change to U.S. patent law since Congress passed the 1952 Patent Act." The Act proposed many of the recommendations made by a 2003 report by the Federal Trade Commission and a 2004 report by the National Academy of Sciences.
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), was a United States Supreme Court decision in the area of trademark law, holding that a functional design could not be trademarked, and that a patented design was presumed to be functional.
This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.
Hotchkiss v. Greenwood, 52 U.S. 248 (1851), was a United States Supreme Court decision credited with introducing into United States patent law the concept of non-obviousness as a patentability requirement, as well as stating the applicable legal standard for determining its presence or absence in a claimed invention.
Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), is a decision of the United States Supreme Court in which the Court reaffirmed the validity of the patent exhaustion doctrine, and in doing so made uncertain the continuing precedential value of a line of decisions in the Federal Circuit that had sought to limit Supreme Court exhaustion doctrine decisions to their facts and to require a so-called "rule of reason" analysis of all post-sale restrictions other than tie-ins and price fixes. In the course of restating the patent exhaustion doctrine, the Court held that the exhaustion doctrine is triggered by, among other things, an authorized sale of a component when the only reasonable and intended use of the component is to practice the patent and the component substantially embodies the patented invention by embodying its essential features. The Court also overturned, in passing, the part of decision below that held that the exhaustion doctrine was limited to product claims and did not apply to method claims.
Blake v. City and County of San Francisco, 113 U.S. 679 (1885), was an appeal from a decree that dismissed a bill filed by the appellant to restrain the infringement by the appellees of reissued letters patent granted to the appellant as the assignee of original letters patent issued to Thomas H. Bailey. The original patent was dated February 9, 1864, and the reissue September 18, 1877. They were for "a new and improved valve for water cylinders of steam fire engines and other pump cylinders." The specification, which was substantially the same in both patents, stated that previous to the invention therein described, the only valve used to relieve the pressure upon fire hose to prevent them from bursting was one operated by hand. To obviate the defects of such a valve, the inventor applied at some point between the engine or pump and the hose nozzle a valve which opened automatically by the pressure in the hose or the pump cylinder, so as to discharge an additional stream and thereby relieve the pressure.
The exhausted combination doctrine, also referred to as the doctrine of theLincoln Engineeringcase, is the doctrine of U.S. patent law that when an inventor invents a new, unobvious device and seeks to patent not merely the new device but also the combination of the new device with a known, conventional device with which the new device cooperates in the conventional and predictable way in which devices of those types have previously cooperated, the combination is unpatentable as an "exhausted combination" or "old combination". The doctrine is also termed the doctrine of the Lincoln Engineering case because the United States Supreme Court explained the doctrine in its decision in Lincoln Engineering Co. v. Stewart-Warner Corp.
In United States patent law, a machine is one of the four principal categories of things that may be patented. The other three are a process, an article of manufacture, and a composition of matter. In United States patent law, that same terminology has been in use since the first patent act in 1790.
Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, was a patent infringement case centered on three patents claimed to be required for full compliance of the IEEE 802.11 (WiFi) standard and the WiFi Alliance Wireless Multimedia Extensions (WMM) Specification. US patents 4,975,952, 6,018,642, and 6,469,993 were owned by Philips Electronics, Fujitsu, and LG Electronics respectively, and placed in the Via Licensing pool. The Via Licensing pool claimed to hold all patents required for a complete WiFi/WMM implementation. Netgear did not enter an agreement with Via Licensing but produced a series of products that conform to the WiFi standard and WMM Specification. Philips Electronics, Fujitsu, and LG Electronics sued Netgear for patent infringement claiming a complete implementation of the WiFi standard implied violating patents held by Via Licensing pool. When tried in United States District Court for the Western District of Wisconsin, the court granted summary judgment of non-infringement by Netgear for all three patents thus plaintiffs appealed. The United States Court of Appeals for the Federal Circuit confirmed non-infringement for two of the three patent and found infringement of the third patent in four of Netgear's products.
Once an invention is patented in Canada, exclusive rights are granted to the patent holder as defined by s.42 of the Patent Act. Any interference with the patent holder's "full enjoyment of the monopoly granted by the patent" is considered a patent infringement. Making, constructing, using, or selling a patented invention without the patent holder's permission can constitute infringement. Possession of a patented object, use of a patented object in a process, and inducement or procurement of an infringement may also, in some cases, count as infringement.
Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965), was a 1965 decision of the United States Supreme Court that held, for the first time, that enforcement of a fraudulently procured patent violated the antitrust laws and provided a basis for a claim of treble damages if it caused a substantial anticompetitive effect.
Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498 (1874), is an 1874 decision of the United States Supreme Court concerning the patent eligibility of abstract ideas. As explained below in the Subsequent developments section, it is intermediate in the development of that aspect of patent law from Neilson v Harford, through O'Reilly v. Morse, to Funk Bros. Seed Co. v. Kalo Inoculant Co., and then to Parker v. Flook, Mayo Collaborative Servs. v. Prometheus Labs., Inc., and Alice Corp. v. CLS Bank Int'l.
The Mercoid cases—Mercoid Corp. v. Mid-Continent Investment Co., 320 U.S. 661 (1944), and Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., 320 U.S. 680 (1944)—are 1944 patent tie-in misuse and antitrust decisions of the United States Supreme Court. These companion cases are said to have reached the "high-water mark of the patent misuse doctrine." The Court substantially limited the contributory infringement doctrine by holding unlawful tie-ins of "non-staple" unpatented articles that were specially adapted only for use in practicing a patent, and the Court observed: "The result of this decision, together with those which have preceded it, is to limit substantially the doctrine of contributory infringement. What residuum may be left we need not stop to consider." The Court also suggested that an attempt to extend the reach of a patent beyond its claims could or would violate the antitrust laws: "The legality of any attempt to bring unpatented goods within the protection of the patent is measured by the antitrust laws, not by the patent law."
Dawson Chemical Co. v. Rohm & Haas Co., 448 U.S. 176 (1980), is a 1980 5-4 decision of the United States Supreme Court limiting the patent misuse doctrine and explaining the scope of the 1952 amendment of the patent laws that resurrected the contributory infringement doctrine in the wake of the Mercoid cases. The Mercoid cases and a few predecessor cases had denied relief against patent infringement to patentees who were deriving revenue from the sale of unpatented products used as supplies for patented combinations or as components of patented combinations, even when the unpatented products were specially adapted for use with the patented combinations and even when they lacked any utility other than that use. The patentees used contributory infringement suits or threats of such suits to enforce their business model, which the Mercoid cases outlawed.