Introduction and patentable subject matter. We begin with an overview of the basic economics of the patent system, the system’s institutional structure, and the choices that businesses face in protecting their intellectual assets. We then consider some of the most significant patent controversies in recent years, which have involved the basic question: What categories of inventions are patentable?
Disclosure and novelty (I). This morning will begin with an examination of the disclosure requirements – what information an inventor must share with the world in order to receive a grant of exclusive rights. We will then move on to the fundamental requirement that a patent claim something new. We will cover both the traditional novelty provisions and the changes enacted in the America Invents Act (AIA). We will also use the AIA to discuss the political economy of the patent system.
Novelty (II) and nonobviousness. We conclude our discussion of novelty and then examine the requirement that a patent claim something that would not have been obvious to others working in the field; that is, that it takes an “inventive step.” We will compare the patent system’s approach to that of other types of intellectual property, including design patents, trademarks, and copyright.
Infringement. Having determined what is required to obtain a patent, this part of the course explores what a patent holder can do with her right. We begin with claim construction, the process of interpreting the scope of patents, and then discuss infringement – literally and by equivalents, and direct and indirect. We will briefly consider defenses to infringement.
Remedies. Here we examine the remedies availability to patent holders who have pursued successful infringement claims. These remedies include injunctions and damages, and this segment will provide an overview of when these remedies are available and how modulating the scope of remedies impacts patent policy. We will also consider the problem of patent trolls.