35 USC 121

§121. Divisional applications

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title [35 USC 120] it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.

35 USC 113

§113. Drawings

The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

申请人应在必要之范围内提供申请标的之图式以辅助了解该申请案。若说明书所载技术本质需以图式说明，而申请人未提供图式。则局长得要求申请人在接到通知之 二个月或二个月以上之时间内提出到局。在申请日以后所送之图式不得作为(i)因揭示不足或不当揭示而用以补充说明书之不完整，或(ii)为解释请求项之范 围而作基本揭示之补充。

35 USC 111

§111. Application

(a)

In general.

(1)

Written application. An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.

(2)

Contents. Such application shall include--

(A)

a specification as prescribed by section 112 of this title [35 USC 112];

(B)

a drawing as prescribed by section 113 of this title [35 USC 113]; and

(C)

an oath by the applicant as prescribed by section 115 of this title [35 USC 115].

(3)

Fee and oath. The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

(4)

Failure to submit. Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

(b)

Provisional application.

(1)

Authorization. A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include--

(A)

a specification as prescribed by the first paragraph of section 112 of this title [35 USC 112]; and

(B)

a drawing as prescribed by section 113 of this title [35 USC 113].

(2)

Claim. A claim, as required by the second through fifth paragraphs of section 112 [35 USC 112], shall not be required in a provisional application.

(3)

Fee.

(A)

The application must be accompanied by the fee required by law.

(B)

The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

(C)

Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.

(4)

Filing date. The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

(5)

Abandonment. Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title [35 USC 119(e)(3)], if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.

(6)

Other basis for provisional application. Subject to all the conditions in this subsection and section 119(e) of this title [35 USC 119(e)], and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.

(7)

No right of priority or benefit of earliest filing date. A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title [35 USC 119 or 365(a)] or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title [35 USC 120, 121, or 365(c)].

(8)

Applicable provisions. The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title [35 USC § §115, 131, 135, and 157].

35 USC 103

§103. Conditions for patentability; non-obvious subject matter

(a)

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title [35 USC 102], if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
如果寻求被专利的subject matter与先有技术为这样：该subject matter，相对于在该subject matter相关的技术上有普通技能的人，在该invention被制作时是obvious。

(b)

(1)

Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 [35 USC 102] and nonobvious under subsection (a) of this section shall be considered nonobvious if--

(A)

claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and

(B)

the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

(2)

A patent issued on a process under paragraph (1)--

(A)

shall also contain the claims to the composition of matter used in or made by that process, or

(B)

shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154 [35 USC 154].

(3)

For purposes of paragraph (1), the term "biotechnological process" means--

(A)

a process of genetically altering or otherwise inducing a single- or multi-celled organism to--

(i)

express an exogenous nucleotide sequence,

(ii)

inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or

(iii)

express a specific physiological characteristic not naturally associated with said organism;

(B)

cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

(C)

a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

(c)

(1)

Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title [35 USC 102], shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

(2)

For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if--

(A)

the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B)

the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C)

the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3)

For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

淺析美國專利法上之非顯而易知性要件

原作者：鼎專利商標事務所專利部經理  尹守信
       

        美國專利法對於一發明能否取得專利權，在技術的本質方面，係取決於其是否能跨越技術高度性之門檻，而該門檻則係由新穎性(novelty) 、實用性 (utility)及非顯而易知性(nonobviousness) 所共同組成，國內習稱為專利的基本三要件或專利三性。在此三要件中，實用性係指發明須 具有確定之功效即為已足，無須與其他技術做比較，乃屬一絕對要件(absolute requirement) ，而新穎性與非顯而易知性之具備與否，則須與先前技術比較始能確定，故屬相對要件(relative requirement) 。新穎性與非顯而易知性最明顯之差異即在於，新穎性只能使用單一先前技術與申請專利之發明做比較，易言之，該發明之每一專利特徵 皆必須被揭露於一件先前技術中，始能稱其欠缺新穎性，但非顯而易知性則無先前技術件數之限制，若發明之全部特徵被分開的揭露於不同的先前技術中，即亦可能 欠缺非顯而易知性，等於以複數先前技術編織成一寬廣的網具，使得眾多專利申請案紛紛中網落馬，形成美國專利最難以跨越之障礙，甚至有學者稱為專利制度的最 後守門員(final gatekeeper of the patent system)，亦有稱非顯而易知性為可專利性之終極要件(ultimate condition of patentability) 者。因此，一發明即使是新穎且有用的，但若其與先前技術之間未存有明顯差異(significant difference)，則仍無法滿足非顯而易知性要件。惟須注意者，非顯而易知性要件亦僅要求明顯差異之存在即為已足，至於是否較先前技效為佳，則非為 所問，被公認為美國現代專利法之創建者、且實際參與制定35USC§103 的聯邦巡迴上訴法院法官Giles S. Rich甚至一再告誡：「我們必須揚棄『可專利的發明必須較先前技術為佳』的似是而非的觀念」， Rich法官進一步說明：藉 由對提高及改良工藝水準之人所提供的保護，得以有效的促成技術的進步，即使他們的發明並未如既有者一樣的優良，但授予其專利並非是對其在技術上的原地踏步甚至退步所為之獎勵，而是針對其所創造的新事物，專利制度並不關注個別發明人的進步程度，而僅關注在技術方面所發生之事物。 由此可知，美國的非顯而易知性係在檢驗申請專利之發明與先前技術之間所存在的 「差異」程度，而非「進步」程度，一發明縱未較先前技術更為完善或有功效之增進，但若其確有極 為明顯之差異者，仍可滿足非顯而易知性要件。此與我國舊專利法要求新型專利須有增進功效之進步性要件顯有不同，雖現行專利法已未再做此要求，但進步性一詞 仍然極易予人和功效增進產生直覺的聯想，況美國採用非顯而易知之詞亦仍會使人誤解，加以以往根深蒂固之觀念難以立即轉變，故對於美國的非顯而易知性及我國 的進步性要件並不以進步為必要，實值得吾人多加注意。

【非顯而易知性之法律規定】

    非顯而易性最初乃是由法院所創造之專利要件，即 1851 年的Hotchkiss v. Greenwood案，此後的一百零二年間，該要件一直以判例法 (case law)的型式存在，直到1952 年美國專利法大幅修訂時，始將其成文化(codify)編為美國專利法第一百零三條 (35USC§103)，即現行35USC§103(a)，後美國國會又於 1984年增訂(c)項，及 1995年增定(b) 項，1999年又修訂了 (c)項。Hotchkiss案中之系爭專利乃為一種製造門把之方法，係以製作陶器之塑型方法來製造門把，有別於當時習知之金屬或 木製品，然而製陶方法在當時早已是習知技術，故美國聯邦最高法院認為系爭專利欠缺技術及巧思(skill and ingenuity) ，而判決該專利無效。

       非顯而易知性之成文法規定係在 35USC§103，該條共有(a) 、(b)、(c)等三項，主要的實質規定係為 (a)項，(b)項乃係有關生物科技 (biotechnology)發明例外不適用(a) 項之規定，(c)項則為發明人所擁有之先前技術例外不適用非顯而易知性之規定，故(b)(c) 項皆為例外不適用之規定，本文將僅針對(a)項之實質規定討論之，該項條文為：
一發明雖未被以本法第一百零二條所訂之方式，相同的揭露或記載，但若該申請專利之技術主題與先前技術間之差異，以該技術主題之整體觀之，在該發明完成時對於 在該技術主題所屬之技術領域具有通常技藝之人而言，乃係為顯為易知者，不得准予專利。可專利性不得以發明產生之方式而加以否定。

    由上述條文可 知，法條中並未對顯而易知做出定義，故條文意義其實是非常不明確的，一發明或一專利被以不具非顯而易知性為由而核駁或宣告無效，乃暗示該發明太過簡單 (too simple)或太過容易 (too easy)，或可以很快速的完成構想，故非顯而易知性之標準實是非常不客觀且不精確。在現行的法律基礎下，一發明若僅有些微的改變，不論其獲得過程之難 易，仍然很可能會因為被認為是顯而易知而被核駁。例如在實務上最常發生的一種狀況，即一發明之所有特徵被分開的揭露於二件或三件先前技術(通常是專利公告 或公開案)中，美國專利商標局(USPTO) 之審查委員必然會以§103(a) 加以核駁。在技術理論上，該發明確實是等於各該先前技術之加總，但首先該被引據之先前技術通常並不會為發明人或任何一個對該技術領域具有專門技藝之人所知 悉其全部，故「推定」發明人或任何人在發明前即已知悉全部先前技術實乃一不合理且過分苛刻之要求，雖在法律上早已不採此一推定 (presumption)，但以筆者於實務上之經驗所得， PTO之審查委員仍先推定所有其檢索所得之資料皆必為一對該技術領域具有通常技藝之人所已知， 再以此為基礎而「推定」該發明係該先前技術「想當然爾」之組合，即一加一等於二，或一加一加一等於三等如此簡單之邏輯推理，而得出該發明係顯而易知之結 論，卻完全不考慮組合這些所謂的先前技術所須之協調及重組設計之努力，或即使在技術上確實可以簡單的加以組合，但將該些先前技術聯想在一起的心思活動本身 就可能並非一般人或熟習該項技藝之人所能易於思及者，但在實際專利審查過程中，審查委員對於非顯而易知性之判斷通常並不會考慮這些因素，或者說很難客觀的將其列入考慮。此乃導源於產生構想 (generate a solution)與瞭解構想(understand a solution)之間的差距，因為無論已檢視過多少先前技術資料，當在面對一個問題而須產生一個解決方案時，絕對遠較在該解決方案產生後，經由解釋而使 他人瞭解其內容更加困難，一旦該解決方案曝光，即必然會產生被他人認為是無足輕重或顯而易知之危險性。

    在決定非顯而易知性的判斷上尚有另一個 難以突破的障礙，即「後見之明」(hindsight)，一發明完成之時至其被判斷是否為顯而易知之時，至少也有一年以上的時間差，對申請專利之發明而 言，其技術狀態是靜止的，且係靜止在申請日當天，但在實際的技術領域中，其進步卻是無時無刻不在發生的，同樣的，審查委員的知識累積也始終沒有停止( 至少 形式上是如此)，如此的時間差及技術落差必然會使得審查委員以後見之明來評價一發明，該發明在其發明完成時可能確為突破性之創新，但在審查委員審查時卻可 能因為技術的進步，而使其顯得了無新意。故此一後見之明之心態在PTO 行政階段之專利審查及行政救濟、聯邦地方法院、陪審團，乃至於聯邦巡迴上訴法院 (CAFC)都應絕對的避免，無論其如何的難以達成。

【非顯而易知之判斷—Graham 因素】

    一發明是否為顯而易知乃為一法律問題(question of law) ，雖然在專利審查階段，PTO在審查一發明具備 §102之新穎性要件後，亦必然會接著審查是否具備§103之非顯而易知性，但其最終決定仍然是在法院。且其雖為法律問題，但其判斷基礎仍然是整體的事實證據。

    關於非顯而易知的判斷，美國聯邦最高法院在1966 年的Graham v. John Deere Co.案中提出了四個考慮因素，此四項 Graham因素至今仍為非顯而易知性判斷上的基本法律架構，使得該案成為一非常重要之案例：
1.先前技術之範圍及內容。
2.先前技術與系爭請求項間之差異。
3.在該技術領域中之通常技藝之水平。
4.非顯而易知之客觀證據。

一、先前技術之範圍及內容

    如前所述，§102 之新穎性要件與§103之 非顯而易知性要件均為相對性專利要件，故其前提是須有相關先前技術之存在，始有審酌之餘地，否則即應視為已具備該要件，故先前技術之適格 (qualification)與否乃為審酌新穎性及非顯而易知性的最基本課題。在§102 中已由明訂各種可據以證明一發明不具新穎性之證據類型，但未明 言此類證據即是所謂的先前技術，即使在§103 之 條文中，雖有提及先前技術(prior art) 之詞，但亦未指明其究竟為何，然就其(a)項之條文文義觀之，其所指之先前技術應係指§102 所規定之各種證據資料，在PTO所發行之專利審查程 序手冊(MPEP)及判決中，亦支持此一見解，即 §102所規定之所有先前技術皆可適用於§103，即符合 §102規定之所有先前技術皆可用以支持§103之核駁，而由於 §102之(a)(e)(g)項始屬新穎性之規定， (b)(c)(d)項則為法定阻卻(statutory bars)事由，故現今較無爭議的見解是 §102(a)(e)(g)項所訂之證據資料可做為§103 之先前技術，其包括有：
1.在發明之前，於世界各地所發行或發證之印刷刊物或專利。
2.在發明之前，於美國境內發生之公開使用或知識。
3.在發明之前，由他人所申請之專利申請案，但於發明之後始公開或公告者。
4.在發明之前，他人於美國境內已完成之發明，且未放棄、抑制或隱匿者。

    至於§102 其他項次中所規定之證據資料，亦並非被確定排除§103之適用，如§102(b) 及(f)亦有被法院考慮之案例。
先前技術除上述的法律適格問題以外，尚有一非常重要的門檻，即非顯而易知性所引據之先前技術必須是與該發明類似的 (analogous) 或有關的(pertinent)，一先前技術若與系爭發明非屬類似技術領域，則其即與非顯而易知性無關 ，而所謂類似或有關的技術領域，CAFC曾提出一項 兩階段檢驗法：(1)先前技術是否屬於發明人所從事之領域(field of the inventor's endeavor) ；(2)若非，則先前技術是否與發明人所涉及之特定問題有合理相關 (reasonably pertinent)。如將磁帶裝載於一封閉卡匣之技術，與印刷工業中之照相原稿膠卷之接合技術，即被認為非屬同一項從事領域；但附著在條棒上的冰淇淋則 與附著在條棒上的糖果係屬於類似的技術領域。惟須注意，此一類似與非類似(nonanalogous)問題僅適用於 §103之非顯而易知性之判斷上，而不適用於§102 之新穎性問題，新穎性在先前技術之關聯性方面乃屬絕對的，亦即新穎性所可引據之先前技術乃不問其技術領域是否相關，故有一理論上之可能性，即一新發明之天線會被一雨傘傘架結構所先占 (anticipate)，即使二者分屬完全不同之技術領域。

    此外，在 先前技術中所揭露之資訊稱為教示(teaching)，此一教示係包含有正面教示(teaching forward) 及負面教示(teaching away)，前者係指該教示與發明之技術方向相同之資訊，後者則反之，如其指出系爭發明之技術乃為不可行或無法發揮某種功效者即屬之，惟不論是正面或負面 教示皆應以整體(as a whole) 觀之，不能僅擇其部份加以引用，必須將所有正面、負面甚至是相衝突的教示皆一併納入非顯而易知性之判斷參考。

二、先前技術與系爭請求項間之差異

    在 確定了先前技術之適格性、類似性及整體性以後，第二步即是釐清系爭發明與先前技術之間所存在之差異為何，以做為對該技術領域具有通常技藝之虛擬之人而言， 是否為顯而易知者，但若單純考慮此一差異部份，卻極有可能誤導判斷者相信此一差異部份即為其發明部份，但並不能單純的將此差異即視為一發明，故仍必須將系 爭發明做整體性考慮，以確定其是否具備非顯而易知性。

三、在該技術領域中之通常技藝之水平

    非顯而易知性的第三項判斷因素，乃是決定 在發明完成時在該技術領域之通常技藝之水平，一發明是否為顯而易知，乃係指針對一在該技術領域具有通常技藝之「虛擬之人」而言，並非法官、陪審團、普通人 (layperson)或天才 (genius)實際上之主觀認定，且該虛擬之人(hypothetical person)係以依循既有知識之方向所思考，並非採從事開發創新之心態。

    在1952 年美國專利法大翻修之前，對於非顯而易知性之判斷係存有 一法律擬制(legal fiction) ，即推定發明人已知所有的先前技術，因為在此之前的非顯而易知性僅有判例法(case law)之規範，缺乏具體明確、合理且統一之見解或標準，故於 1952年的修法程序中，將非顯而易知性納入成文法之明文規範，故於35USC§103在 1953年一月一日施行後，即不再推定發明人已知悉任何先前技術，CAFC甚至正式宣告「發明人已知所有重要先前技術」之推定已死 。§103(a)更在條文中強調「通常技藝」(ordinary skill) ，以避免法官給予過高技藝水平之認定(即將通常技藝認定為特殊技藝(extra-ordinary skill)) 。CAFC亦提出一些在決定通常技藝之水平所應考慮之因素：
1. 該發明人之教育水平( the educational level of the inventor) 。
2. 於該技術領域內所遭遇之問題類型(type of problems encountered in the art) 。
3. 對於該問題的先前技術解決方式( prior art solutions to those problems)。
4. 做成創新之容易度(rapidity with which innovations are made)。
5. 技術之複雜性(sophistication of the technology)。
6. 該領域內實際工作者之教育水平(educational level of active workers in the field)。

    雖 然美國專利法條文及判例皆如此肯定的宣示不推定(或假設) 發明人業已知悉所有的先前技術，且如前所述，非顯而易知性乃屬法律問題，法院擁有最終決定權，但在專利審查階段，PTO 仍然亦有權審查此一要件，該要件之欠缺甚至成為佔所有核駁理由中最高的比例，在PTO面對數量如此龐大的專利申請案的情況下， PTO 的審查委員是否對每一件申請案都確實依據法院所訂出的上述原則及標準加以審酌，實不無疑問。在實務上，PTO官方處分書 (Office Action，OA)的「制式邏輯」是先引據一件或數件先前技術 (絕大部份是美國專利公告案及公開案)，然後根據這些所謂的先前技術而認為該發明係對該技 術領域具有通常技藝之人而言係顯而易知者，而予以核駁，在OA中 PTO並不會告知所謂通常技藝之水平何在，亦不會告知其如何依據上述六項考慮因素而做此決定，而申請人在面對顯而易知之核駁理由時，若欲爭執通常技藝水平問題，即須自行舉證證明該被引證之先前技術並非 (全)為在該技術領域具有通常技藝之人所知 悉，對申請人而言其實是非常困難且缺乏說服力的，對於顯而易知核駁之克服幾無助益，實務上亦極少以此做為答辯理由，至少亦不會做為主要的答辯理由，一般仍 由技術方面做答辯。本文認為，§103(a) 確為一具有理想性之條文，但PTO基於實際執行時之窒礙，而仍暗渡陳倉的推定所有先前技術皆為發明人所已知 ，藉此將舉證責任移轉予申請人，PTO確有其難 言之隱及難行之苦，在審查階段實難有法理之辯，且面對一已存成見之審查委員，要說服其改變初衷並非易事，在專利訴願暨衝突委員會(BPAI)之行政救濟程 序或法院訴訟程序，始有較高之機會藉論理而得到翻盤的機會。

四、非顯而易知之客觀證據：第二重考慮因素

    非顯而易知性之判斷除上述的 技術性分析以外，尚須審酌所謂的第二重考慮因素(Secondary Considerations)，其可幫助判斷者避免後見之明，其包括有多種型態之因素，如該發明於商業上的成功 (commercial success of the invention)、長期需求的滿足(satisfication of a long-felt need) 、他人於解決同一問題上之失敗(failure of others to find a solution to the problem)、他人對該發明之抄襲(copying of the invention by others)、不能預期的結果 (unexpected results)，以及專家質疑的表示(expression of disbelief by experts) 等。

    雖然許多的判決或處分都會啟動第二重考慮因素之審酌，但其並非決定性之因素，所謂第二重 (secondary)考 慮因素並非指其在重要性方面為次要的，法院或PTO在判斷非顯而易知性時皆應通盤審酌第一重及第二重考慮因素，故亦有許多案例顯示第二重考律因素並未克服 發明係顯而易知之認定，易言之，第二重考慮因素之存在並不能完全證明一發明非為顯而易知，而第二重考慮因素之欠缺亦不必然指證該發明即為顯而易知者，第二 重考慮因素乃為非顯而易知性判斷上的一項中性因素(neutral factor)。但在申請人或專利權人主張第二重考慮因素時，尚必須證明其所主張之第二重考慮因素與其發明或專利之間的關聯性 (nexus)，例如專利權 人若以其專利產品在市場上的暢銷 (商業上的成功)為由，來證明其發明並非顯而易知者，則該專利權人即必須證明其商業上的成功純粹來自其發明之創新優點，而 非因價格、市場定位及廣告等其他因素所致。

    在上述諸多的第二重考慮因素中，最常被引用者應屬商業上的成功一項，但在舉證上除前述之關聯性問題以外，尚須注意此一商業上的成功係起因於其專利說明書中所揭露之功能或優點，如此始能確定此一商業上的成功係歸功於該專利發明，而非來自其他人之改良。
       

    另 一項較常被引用的第二重考慮因素係為長期需求的滿足，所謂長期需求係指長期存在於一技術領域且尚未解決之公認的技術問題，有此種技術問題存在的情形下，即 使一發明純就技術方面乍看之下似為顯而易知者，但在專利的非顯而易知性上仍應視為業已具備，例如降低工廠排放廢氣中的二氧化硫含量即曾為一長期存在且未解 決之需求，當現有的空氣污染控制裝置已可濾除97 ％的含硫量時，仍然存在對更高除硫率之需求，故一發明若能濾除99.5％的含硫量，則縱於技術方面並無重 大改進，但仍應視為具備非顯而易知性。

【先前技術之啟發或動機】，

    純就技術而言，一發明可能是單一先前技術顯而易知之修改 (modification) 或多件先前技術顯而易知之組合(combination)，但此一顯而易知之認定亦有可能係來自後見之明之重建 (hindsight construction)，為避免判斷者的後見之明，乃有判例法要求此一修改或組合須具有動機(motivation) 、啟發(suggestion) 或教示(teaching) 之證據，始能認定一發明為顯而易知者，CAFC甚至認為嚴格要求出示組合先前技術之教示或動機乃對於後見之明的顯而易知性分析 的最佳防範，且若先前技術之組合並未獲得任何啟發、教示或動機，即直接使得發明人之揭露成為組合該先前技術之藍圖，而可克服後見之明的存在。此一避免後見之明的要求存在已久，甚至早於 §103之成文法制定時間。

    無論法院或PTO 在適用§103時， 皆必須提出組合或修改先前技術的動機、教示或啟發的明確且特定的實際證據，除非該發明僅為機械元件的替換，而未有不能預期之結果，否則即不得認定該發明或 專利係為顯而易知。此一證據可為先前技術本身，亦可來自他處。至於有關的動機、教示或啟發，傳統上皆認為可來自先前技術之揭露、具有通常技藝之人的知識， 或者是待被解決問題之本質，但近來CAFC的判決又指出該動機或啟發必須是來自被引證之先前技術始為適格，亦即 CAFC以排除後兩處證據來源之方式來限制 非顯而易知性之認定。又CAFC雖亦曾提出判斷「啟發」之方法：(1) 先前技術之教示是否有明示或暗示，藉由組合這些教示，以系爭發明之方向，而完成進一 步改良的可能性；(2) 系爭發明是否有完成多於先前技術所明示或暗示之組合。然而在實務上，這些所謂的動機、教示或啟發究係如何構成，至今仍不十分明確。

【§103(a) 後段】

       35USC§103(a) 後段特別規定：「可專利性不得以發明產生之方式而加以否定」，此乃宣示專利權之授予係與該發明乃因意外(accident) 、錯誤(mistake)或非 常簡易(very easily or quickly)而產生者無關，意外、錯誤及失敗的實驗亦可能產生非常成功之產品，例如現今已被廣泛利用的鐵氟龍 (Teflon)，即是於1938 年一項意外發現的結果，鐵氟龍係由四氟乙烯(tetrafluoroethylene ，TFE)聚合(polymerize) 所產生，此與當時的認知完全背道而 馳，傳聞鐵氟龍的發明人Roy Plunkett( 時為杜邦公司的化學工程師)，在一容器內的乾冰上儲存了一批TFE ，並保持容器內之低壓，待以進行一些其計畫中的實驗，隔天早晨他發現 了容器內的物質發生聚合反應，鐵氟龍於焉誕生。又如抗生素(antibiotic) 也是在一連串意外及偶然的情況下發現的。1928年，英國人佛萊明 (Alexander Flemming)原本在研究葡萄球菌，一次因他趕著去渡假，而將塗有細菌的培養皿留在桌上未及收拾，當他回到實驗室整理東西時，另一位科學家皮萊斯 (David Merlin Pryce) 正好來串門子，他發現佛萊明的培養皿上長了黴菌，但黴菌旁邊卻都不長細菌，佛萊明認為一定是黴菌分泌某種會殺死細菌的物質所致，就以實驗證明 了他的想法是對的，剛好那時他有一位同事正在進行黴菌研究，那位同事告訴他，培養皿中的那種黴菌的學名是 Penicillium notatum(青黴菌)，佛萊明就將那種未知的抗菌物質稱做 Penicillin(中文譯做盤尼西林或青黴素)，但當時佛萊明並沒有進一步研究如何純化 盤尼西林，直到1945年佛洛里 (Howard Florey)及錢恩(Ernst Chain)始成功的純化盤尼西林，並證明可以用來治病，更於當時的二次世界大戰期間拯救無數傷病患，最後佛、錢二氏與佛萊明三人合得 1945年的諾貝爾 醫學獎。

    因此，即使在不知一發明之原理究係為何的情況下，只要專利說明書充分揭露其如何得到或使用，即已具備可專利性，不得以其未揭露原理而 核駁或無效之，雖然揭露原理較易使審查委員或法官信服其確實可據以實施(enabling)，但未揭露原理亦並不必然使發明欠缺可據以實施性，因 35USC§112所規範之可據以實施性係要求熟習該項技藝之人可依發明人之揭露而重複實施即為已足，知不知其原理與該發明可否重複實施乃無必然關係， § 112與§103(a)之後段實已充分體現此一道理。

【結論】

    在 美國專利法上，非顯而易知性堪稱為最重要的可專利性要件，但也最不容易客觀化與標準化，而使其適用上極為困難，即使美國國會與法院一再努力的企圖使其更加客觀，但實際上仍難脫主觀認定之影響，故於專利審查階段，會否遭致非顯而易知性之核駁實有相當高比例的運氣成分，在面對此種核駁理由時，本文建議， 若該申請專利之發明確為多件先前技術之組合，或單一先前技術之修改之情形，不妨以先前技術未提供如此組合或修改之動機、啟發或教示做為答辯主軸，較諸以技術分析 之方式答辯，應有較高之說服力，因做為主要先前技術來源的專利說明書通常並不會提供這些動機、啟發或教示，且先前技術中有無提供組合或修改之動機、啟發或 教示，亦遠較爭執該組合或修改是否顯而易知之問題更為客觀。

    另須特別注意者，即§102(e) 與§103合併適用之問題，雖在MPEP 及諸判決中皆支持以§102(e)所訂之先前技術做為§103 非 顯而易知性之判斷基礎，但事實上§102(e) 所訂之先前技術(即尚未公告或公開之專利申請案) 在後發明申請前尚未公開，即該所謂的先前技術資料仍處於保 密階段，除非該申請案之產品已上市或其申請人自行公開，在後發明之發明人根本無從得知該所謂的先前技術，縱使如此， §102(e)/§103之核駁至今仍屬合法，但卻極不合理，且與我國之規定明顯相左，實值得我國發明人及申請人多加注意，也許有朝一日，§102(e)/§103 之核駁會被最高法院推翻，正如1971年的 Blonder案一舉推翻行之有年的禁反言相對性原則(doctrine of mutuality of estoppel) 於專利無效訴訟上之適用一般，該案終結了以往一專利被一法院宣告無效確定以後，仍可起訴控告其他侵權人之專利侵權，並再次爭執該專利有 效性之合法但不合理之情形。
參考文獻
1.Donald S. Chisum et al., "Principles of Patent Law", Foundation Press (2nd ed. 2001).
2.Donald S. Chisum, "Chisum on Patents", Matthew Bender (1978-).
3.Donald S. Chisum, "Patent Law Digest", LexisNexis (2003).
4.Herbert F. Schwartz, "Patent Law and Practice", BNA Books (4th ed. 2003).
5.Kimberly A. Moore, "Patent Litigation and Strategy", West Group (2nd ed. 2003).
6.Peter S. Canelias, "Patent Practice Handbook", Aspen Law & Business (2002).
7.John F. Witherspoon (editor), "Nonobviousness—The Ultimate Condition of Patentability : Papers Compiled in Commemoration of the Silver Anniversary of 35 USC 103", BNA Books (1980).
8. Joshua McGuire, "Nonobviousness: Limitations on Evidentiary Support", 18 Berkeley Tech. L.J. 175, Berkeley Technology Law Journal (2003).
9. Robert Patrick Merges, "Patent Law and Policy", Matthew Bender (2nd ed. 1997).
10.李明德，美國知識產權法，法律出版社 (2003)。
11.徐明達，細菌的世界，天下雜誌 (2004)。

Funding Guide - Intellectual Property

the original post from: http://www.york.ac.uk/research/guide/1_res_ip_notebook1.html

Section 1 - Introduction

Why do you need to keep a good lab notebook? As a result of the General Agreement on Tariffs & Trade (GATT) 关税贸易总协定, there has been a major change in US Patent Law. To take advantage of this change, inventors outside the USA 美国之外的发明者 must learn to behave like US inventors in the way that they keep records of their work using formal laboratory notebooks 正式的实验室笔记簿 corroborated on a regular basis.

The need for this procedure 这道手续 has arisen because, in determining priority of invention, the USA has retained its "first to invent" system rather than switch to 切换到 the rest of the world's "first to file" system.

However, the USA has extended its system to make a level playing field in that now, for the first time, evidence of inventive acts 发明创造行为的证据 that took place outside the USA can be used to establish the date of invention 确立发明日期. This evidence must be up to Court standards. 证据需要达到法院的标准

This change in US law will require a major change of attitude in record keeping by inventors outside the USA wishing to maximise their chances of obtaining US patents.

Section 2 - Change in US Patent law

The United States of America represents one of the largest markets in the world. Possession of a United States patent can be a tremendous commercial advantage. The purpose of this article is to point out the importance of keeping good, reliable laboratory records so as to ensure that, in any US patent disputes regarding the date of invention 关于发明日的专利争议, the necessary evidence is readily to hand.

There have been negotiations by over 100 countries for more than two decades to try and arrive at 努力并达成the General Agreement on Tariffs & Trade (GATT), which includes an Agreement on Trade Related Aspects of Intellectual Property (TRIPS).与贸易有关的知识产权协议 The US administration's bill 法案 to implement the Agreement was passed by Congress and signed by President Clinton 国会通过并总统签署on 8 December 1994. This has resulted in revolutionary changes 革命性变化 in US Patent Law especially affecting foreign (non-US) applicants.

In the race to the Patent Office, in most countries the first to file wins. For historical reasons 因历史原因, the USA has a system in which the first to invent wins and, for the moment, has retained this system. This means that, where two or more parties claim an identical invention, the US Patent Office declares there to be an "Interference" 争议 and begins proceedings 开始程序 to ascertain who was the first party to make the invention.

Section 3 - Effects of law change

The recent changes to US Patent Law now permit an applicant or patentee to establish a date of invention based on evidence of inventive activity occurring outside, as well as inside, the USA.

A further effect 进一步的效应 of this law change is to allow the applicant to "swear back" to this date of invention in order to show that it was earlier than the date of publication of a reference cited as prior art against a patent application.

This change became effective 开始生效 on 1 January 1996. Prior to 1 January 1996, the only date that a non-US patent applicant could rely on was the date of the filing of a US patent application or, if any, a priority application, even though the invention was actually made before filing.

Accordingly, after 1 January 1996, non-US inventors are able to establish invention dates prior to 1 January 1996, although pre-1 January 1996 information is to be treated as showing a date of invention of 1 January 1996. That is to say, the earliest date which can be established is either the filing date or 1 January 1996 for events occurring prior to 1 January 1996.

"Invention" in the USA comprises two elements. These are "conception" and "reduction to practice". 构想和付诸实践 In order to prove a date of invention for US purposes, it is necessary to have proof of conception of the invention and also to show diligence in its reduction to practice. 发明构想的证据以及表明付诸实践的勤勉是必要的

Reduction to practice can be "constructive" (by filing a patent application) or "actual" (eg. the building of a prototype of the invention). 付诸实践可以为结构性的(提出专利申请)，也可以为实际的(发明原型的建立)

Section 4 - Evidence and Diligence

In order to prove the date of invention, US and foreign applicants will need to provide evidence of the date of the conception of an invention and proof of diligence in its reduction to practice.

Evidence

Evidence may take a variety of forms 采取多种形式 but will frequently be contained in a laboratory notebook.

The evidence must clearly show that the inventive act was indeed carried out by the inventor at the date asserted by him and must be signed and dated by both the inventor and a corroborating witness. 证据必须清楚的表明发明行为的确在发明人声称的日期由发明人完成，并由发明人和证人注明日期。

This is because US interference law requires that evidence be "corroborated", by someone who has read and understood the work that has been carried out but is not a potential or actual co-inventor.

Thus, for example, if the inventor is a PhD student, then the witness should not be his or her supervisor if they are co-inventors.

It is not necessary for the witness to say anything. A signature and date under the statement "read and understood" will be sufficient 足够了. As already noted, the witness must have read and understood the work in question before signing and dating any page. Lack of this witness signature can prove fatal, since the presentation of uncorroborated records, even if accompanied by sworn statements, may not be accepted as being credible. All witnesses must, of course, understand the need to maintain confidentiality.

Diligence 勤勉

Diligence in the reduction to practice of an invention means that, as far as possible, generally steady, uninterrupted and constant work occurred following the conception of an invention.

In an interference action, unexplained periods of inactivity 不清楚的不作为时期 could lose the case, especially in a situation where each day is critical. All activities must be accounted for, even if it is only to note that you were waiting for, say, sample analysis that resulted in a delay in the proceedings. 样品分析导致进程的耽搁 Even apparently irrelevant entries noting "on vacation" or "at the dentist" should be included. 即使不相关的记录“放假”或“看牙医”应该被包括

Interferences take place often years after the invention was made 发明之后的若干年 and, unless accurate personal diaries and journals are kept, the careful recording of laboratory notebooks may be the only way of recalling the actual events which occurred at that time and has an advantage over personal papers since they are witnessed.

After all, who can remember the actual date they visited a dentist once a year has passed? Thus the careful keeping and witnessing of notebooks recording progress is vital to proving diligence.

Section 5 - First to invent

There are three simplified scenarios when determining who is the first to invent:

a) Party 1 was the first to conceive and reduce to practice (regardless of diligence) Verdict: Party 1 will thus be the winner. 第一个构想并付诸实践(无论勤勉与否)

b) Party 1 was the first to conceive but Party 2 was the first to reduce to practice. Party 1 did not show diligence. Verdict: Party 2 is the winner. A首先构想，B首先付诸实践，A没有表明勤勉，B胜。

c) Party 1 was the first to conceive and was diligent in reducing the invention to practice although Party 2 was the first to reduce to practice. Verdict: Party 1 is the winner. A首先构想并勤于付诸实践，B首先付诸实践，A胜。

Thus it would be wise to establish good laboratory notebook keeping habits. A well conceived, maintained and witnessed notebook could be crucial in establishing a date of invention in US interference proceedings. It could mean the difference between getting a US patent or not.

Patented in U.S. via PCT Route

the original post from: http://www.webpatent.com.nyud.net:8090/knowbase/evaluate/law/law11260.htm

Under U.S. patent law, an invention claimed in a U.S. patent application filed prior to November 29, 2000, which has not been voluntarily published by the USPTO lacks novelty if it was described in a U.S. patent granted on a "parent" PCT application by another who filed a "child" national application in the U.S. prior to the date it was invented by the applicant for a patent. This a more special case of the 35 U.S.C. 102(e) special case in which the PCT route to filing a U.S. patent application has been used.

The general rule of 35 U.S.C. 102(e) is a special case in that the document (called a "reference") that destroys novelty becomes effective (has an "effective date" that occurs) when the reference is still unpublished (because U.S. applications are not published). The parent PCT application may or may not have been published (but usually is) before the child U.S. national application that is used as the reference) is filed. If the applications are both assigned to the same entity or if there is any overlap in inventorship (there is at least one common inventor who is listed in both U.S. applications), the issue can even arise before the earlier-filed U.S. application issues.

This rule requires that the national stage of a PCT application that has designated the U.S. to have been "commenced" by the depositing (filing) in the USPTO of three items. Those three items are: (1) the national patent application fee, (2) a copy of the international application and a translation of the application into the English language, if it was filed in another language and (3) an oath or declaration by the inventor(s). Only after these three items have been deposited in the USPTO is the national U.S. application that is being used as the reference effective for the purposes of 35 U.S.C. 102(e). Thus, thefiling date of the PCT application is not the filing date of the reference used in this rule.

It should be noted, however, that there is a very special case of this more special case. A U.S. national application (filed prior to November 29, 2000, which has not been voluntarily published by the USPTO) that is patented "via the PCT route" can claim the benefit of thefiling date of an earlier-filed, related U.S. or international application designating the U.S. in the same way that a regular U.S. patent application can (35 U.S.C 120) if it is filed as a continuation, continuation-in-part or divisional application. The later-filed application must include an appropriate reference to the earlier-filed application, be copending with that application and have at least one inventor in common with that application. In this very special case, then, the effectivefiling date of a U.S. patent reference (derived from an national application that is a continuation of a PCT application) can be used as the effectivedate of the reference under 35 U.S.C. 102(e).

Only issued U.S. patents and issued Statutory Invention Registrations can destroy novelty under this rule; issued non-U.S. (foreign) patents cannot. However, as was noted above, if there is common owership or inventorship, maintaining the secrecy of the earlier-filed application is not an issue, and a "provisional" rejection of the later-filed application can be made under 35 U.S.C. 102(e). Anything that could have been claimed in the reference can be relied on by the Examiner to reject the claimed invention.

Because an applicant(s)'s filing date is initially presumed to be his/her/their date of invention, a rejection under 35 U.S.C. 102(e) may be overcome by proving a date of invention earlier than the effective date of the reference. However, the date of invention can only be carried back one year before the earliest U.S. filing date, which can be the PCT filing date. A rejection under 35 U.S.C. 102(e) may also be overcome by proving that the invention described in the reference was not invented by "another," i.e., that the invention was invented by the same inventive entity as the current applicant(s).

The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP): (after PDF file downloads, scroll down to indicated section)

Date of Invention

The earliest of the following dates:

(a) the date the inventor filed either a provisional or non-provisional (full) application or

(b) the date the inventor can prove he or she built and tested the invention in a NAFTA or WTO country or

(c) the date the inventor can prove he or she conceived of the invention in a NAFTA or WTO country and diligently reduced it to practice.

Filing an official provisional application creates a filing date for your invention. This filing date establishes the date of invention and protects you from other inventors who might claim to be the first ones to have discovered your invention. The filing date serves as proof to the U.S. Patent Office that you in fact created the invention.

美国专利法简史

the original post from: http://www.ladas.com/Patents/USPatentHistory.html

Public perception of the patent system has swung widely over the years from highs 高处, such as those in the late nineteenth century when Mark Twain could write "a country without a patent office and good patent laws was just a crab and couldn't travel anyway but sideways or backwards" 一个没有专利局和好的专利法的国家就像一个螃蟹，只能横着走和向后走 [1] to lows 低处 in the mid twentieth century when it could be written "the only patent that is valid is one which this (the Supreme) Court has not yet been able to get its hands on."唯一有效的专利还没到 Supreme Court手中 [2] The value and philosophical basis underpinning the patent system has been a matter for debate over the years.

Patent Systems in Medieval Times 中世纪的专利系统

In medieval times, the grant of exclusive rights "monopolies" by the sovereign 由君主授予的排他权"monopolies" had been a convenient way in which the sovereign could raise money 捞钱without the need to resort to taxation. Such grants were common in many European countries. Some of these, for example in mining regions 矿业领域 or in respect of production of certain textiles seem to have had a relation to innovations. Although there seems to have been an earlier law directed specifically at inventions relating to the manufacture of silk, the first law providing for the grant of exclusive rights for limited periods to the makers of inventions in general as a deliberate act of economic policy seems to have been in Venice in 1474 威尼斯1474年. It does not seem coincidental that this was during a long war between Venice and the Turks during which Venice lost most of its trading empire in the Eastern Mediterranean 东地中海 and consequently had to refocus its economy on manufacture rather than trade 制造业而非贸易. Indeed, as Venice's domination of trade with the East weakened, it adopted a number of measures to establish and maintain a preeminence in manufacture including laws prohibiting emigration of skilled artisans and the export of certain materials 禁止熟练的技工的移民和特定材料的出口, while at the same time encouraging the immigration of skilled workers from other countries, for example by a tax holiday for two years after their arrival in Venice.来到威尼斯两年的免税期

Towards the end of Elizabeth's reign the English courts, probably at least to some extent 至少在某种程度上 noting developments on the Continent started to restrict 限定 the rights of the sovereign to grant monopolies unless they were for the introduction of a new industry to the country.[3] 为了新产业的引进

In 1624 as part of the skirmishing between Parliament 国会/议会 and the Crown leading up to the English Civil War, the English Parliament passed the statute of monopolies. This had the effect of limiting the power of the Crown to the grant of monopolies to making such grants only to inventions for limited periods (14 years - the duration of two training periods for craft apprentices) and most importantly only for "manners of new manufacture" that were introduced into the realm by the recipient of the monopoly. Such grants were, however, conditioned on their not being "mischievous to the state"对国家有害 (for example by raising prices of commodities) or "generally inconvenient" 不方便

As noted above the original English approach, which was followed in the American Constitution, was to place emphasis on the advantage to society as a whole of developing new inventions. Section 1 of the French law of 1791 took a somewhat different approach: "All new discoveries are the property of the author; to assure the inventor the property and temporary enjoyment of his discovery, there shall be delivered to him a patent for five, ten or fifteen years". The emphasis here was on the inventor having property in his discovery - an emphasis on the rights in the invention rather than on the benefits to society 重点在于发明的权利而非对社会的益处. Today this approach is of limited importance in the patent field but it is still significant in the area of copyright 在版权领域仍有意义 - where the Anglo Saxon approach is focussed heavily on the bundle of economic rights associated with control over whether others are entitled to copy a work, whereas the French approach focusses more heavily on the moral rights of authors - a fact that is emphasized by the fact that the word generally used as the French translation of the word "Copyright" is "droit d'auteur" (literally Author's Rights 按字面意思为作者的权利).

Modern thinking on the rationale for a patent system effectively sees this as a contract between the invention and society at large. This was well expressed in a report to the French Chamber of Deputies in the debates preceding adoption of the French Patent Law of 1844 (a law that remained in effect with little change up to the 1960's):

"Every useful discovery is, in to Kant's words 'the presentation of a service rendered to Society'. It is, therefore, just that he who has rendered this service should be compensated by Society that received it. This is an equitable result, a veritable contract or exchange that operates between the authors of a new discovery and Society. The former supply the noble products of their intelligence and Society grants to them in return the advantages of an exclusive exploitation of their discovery for a limited period".

As Abraham Lincoln once put it "The Patent System added the fuel of interest to the fire of genius."

This paper 本文 attempts to summarize 总结 the way in which the patent system has developed in the United States, noting the different attitudes that have prevailed at different times and the effects that these have had on development of the patent law.

The United States Constitution, on which U.S. Patent Law depends, was drafted at the height of the industrial revolution 工业革命 at a time when the impact of patents 专利的作用 was first being seriously felt in England.[4] Additionally, while the Constitution was being drafted in Philadelphia 在费城起草, John Fitch's steam boat 蒸汽机船 was undergoing trials on the Delaware River and the Constitutional Convention apparently adjourned one afternoon to watch them. A pro-patent climate 支持专利的氛围 endured in the United States through much of the nineteenth century leading to the comments by President Lincoln and Mark Twain noted above. [5] However, the last two decades of the nineteenth century and the twentieth century have seen a number of climate changes. In the last two decades of the nineteenth century there was a period of economic depression 经济衰退 and increasing concern 关注 about the power of "big business" leading to the passage 通过of the Sherman Antitrust Act in 1890. This climate was reflected in the patent field by an increasing tendency of the courts to hold patents invalid 判决专利无效. By the late 1890's the depression had run its course and patents came back into favor with the reviving economy.

In general the twentieth century has seen a dynamic interrelationship between the patent system and the application of antitrust laws. Although the first antitrust law, the Sherman Act, was enacted in 1890, the courts did not start to give it teeth until Theodore Roosevelt's administration (1901-1909) 西奥多罗斯福政府. It was not until the 1930's that the patent system started to come under attack, being viewed as assisting in the maintenance of monopolies 助长维持垄断 that were seen as being at least a contributing factor to the economic misery of the thirties. This skepticism about the patent system survived World War II and blossomed again in the depressed economic conditions of the 1970's, a period of strong anti-trust enforcement.[6]

In the early 1980's, the thinking of the Chicago School of economists came to the fore and with the election of President Reagan enthusiasm for antitrust enforcement went out of fashion. At about the same time the Court of Appeals 上诉法院 for the Federal Circuit was created at least in part to remedy 补偿 a scandalous disarray between the regional circuit Courts of Appeal in dealing with patent cases. The new court initially seemed pro-patent in its attitude and this has resulted in a generally more favorable attitude to the value of patents throughout American business. [7] One manifestation of this change has been the court's assertion that the patent statute means what it says when stating that "a patent shall be presumed valid 推定有效. [8] The court has held that anyone challenging the validity of a patent needs "clear and convincing" evidence 清楚及可信的证据 to succeed. [9] This contrasts with the normal standard of proof in civil cases in which a party asserting a cause need only establish his case on the balance of probabilities. On the other hand more recently decisions of the court have cautioned against giving too wide an interpretation to patents and reiterated the importance of the public having a clear understanding of what does or does not fall within the ambit of any given patent 落入专利的范围. Thus over the past two decades patents have been back in favor, but the pendulum will probably swing again.

The earliest grants of a patent for an invention in what is now the United States seems to have been by the Massachusetts Bay Colony in the 1640's. Although pre-independence patent custom in the American colonies owes much to the English Statute of Monopolies of 1624, which restricted the right of the crown to grant monopolies so that henceforth they could be granted only for a limited period and only for manners of new manufacture. [10] The Statute of Monopolies was never made directly applicable to the American colonies. [11] During the period of the Confederation after independence had been achieved but before the adoption of the Federal Constitution of the United States, most of the states had their own patent laws, although only that of South Carolina specifically set out a provision granting inventors an exclusive privilege of using their new machines for a defined period (14 years). However, as noted by James Madison in the Federalist "the States cannot separately make effectual provision" for the protection of invention and so in drafting the Constitution of the United States, responsibility for providing such protection was entrusted to the Congress of the United States.

The Constitutional basis 宪法基础 for federal patent and copyright systems is to be found in the Constitution of the United States Article 1, Section 8, clause 8 which states:

Congress shall have power ... to promote the progress of science and useful arts 推动科学和有用之技术的发展 by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

Federal patent laws have existed since 1790

The first United States Patent Act, that of 1790 was a short act of seven sections only entitled "An act to promote the Progress of Useful Arts". [12] Under its terms any two of the Secretary of State 国务卿, the Secretary of War and the Attorney General 司法部长 were empowered to grant patents for terms of up to fourteen years for inventions that were "sufficiently useful and important" 足够有用及重要provided that the grantee submitted a specification describing the invention (and where appropriate a model thereof) to the Secretary of State at the time of the grant.

In 1793 this act was repealed 废止 and replaced by a slightly longer act, the drafting of which is largely attributed to Thomas Jefferson 归功于托马斯杰斐逊, who was at the time Secretary of State and therefore intimately involved in the administration of the 1790 Act. The Act is notable for its definition of what constitutes patentable subject matter 可专利之主题的定义 in the United States, which definition is almost unchanged up to now:

any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter. [13]

A short description had to be filed with the application. However, before grant could occur it was necessary to submit a written description of the invention and of the manner of using or process of compounding the same in such full, clear, and exact terms, as to distinguish the same from all other things before known and to enable any person skilled in the art or science of which it is a part, or with which it is most nearly connected, to make, compound and use the same". [14] Another notable feature of the law 另一个值得注意的特征 was its early recognition that one patent might have a dominating effect over another and it specifically set out the principle that securing a patent on a particular improvement of a previously patented invention did not give the patentee of the improvement patent any right to use the invention that was the subject of the original patent or vice versa 反之亦然. [15] However, the only examination of the application was a purely formal one.

Rights to patents under the 1793 Act were confined to citizens of the United States.

The 1793 Act was amended in 1800 to allow foreigners who had been resident in the United States for two years to obtain patents, subject to them making an oath that the invention in question had not to their knowledge or belief been known or used previously in the United States or abroad. This act also provided for the first time the possibility of an award of treble damages 三倍于损害的奖励 for patent infringement.

What was meant by the term "new" in the early statutes varied somewhat but after 1800 the courts considered simply whether the invention was known before the date on which the applicant for a patent claimed to have made his or her invention. [16] In 1829 the Supreme Court in the case of Pennock v. Dialogue[17] recognized the potential dangers of such an approach which enabled the inventor to delay filing a patent application until competition was imminent and construed the statute so as to create a statutory bar to deny patent protection to one who had previously publicly used his invention.

In 1832 a new act expanded the category of potential patentees to cover all resident aliens who had declared an intention to become citizens of the United States, provided however, that any patents granted to the class of patentee become void if they did not work the invention publicly in the United States within one year of grant. It also became possible to obtain reissue of a patent to correct errors in it. [18]

In the same year the Supreme Court in Grant v. Raymond[19] made it clear that failure to provide an adequate description of the invention was a defense which a defendant 被告 might use when sued for patent infringement, it being held that

as a preliminary to a patent a correct specification and description of the thing discovered (was required). This is necessary in order to give the public, after the privilege shall expire, the advantage for which the privilege is allowed and is the foundation of the power to issue the patent ...

A major review of the law was undertaken in 1836 in response to complaints about the grant of patents for things that lacked novelty. Under this revision the Patent Office was set up as part of the State Department and a specification had to be submitted to it and be examined for novelty before a patent would be granted. As a consequence, the provision of the 1793 Act requiring the inventor to distinguish his invention from the prior art was expanded to require the applicant to "particularly specify and point out the part, improvement or combination, which he claims as his own invention or discovery". [20] This provision is the antecedent for modern claim drafting worldwide. Other features of the 1836 law were to codify the law relating to statutory bars, [21] to clarify the law relating to cases of conflict between competing applications and to provide a mechanism for establishing this. [22] The Act also provided for the possibility of obtaining a seven year extension to the basic fourteen year term in certain circumstances 情况. The 1836 Act also finally removed all limitations on the nationality or residence of those who could obtain United States patents. However, it did not end all discrimination on this score. U.S. citizens or residents intending to become citizens were charged $30.00, British subjects were charged $500.00 and all other foreigners $300.00. [23]

In 1839 the law was amended to provide for a grace period (of two years) for publication or use of the invention by the applicant before filing his or her patent application. [24] The act also provided for an appeal from rejection of a patent application by the Patent Office to the Chief Justice of the District of Columbia. [25]

In 1842 a statute was passed to provide for the grant of patents for "any new and original design for a manufacture or for printing on a fabric. However, the right to obtain a patent for such a design was confined to U.S. citizens or residents who were intending to become citizens.

In 1849 responsibility for the Patent Office was transferred from the State Department to the Department of the Interior.

The next major step forward was the introduction of the concept that to be patentable an invention not only had to be new and useful but also non-obvious. This charge was effected by the courts rather than by statute, notably in the Supreme Court case of Hotchkiss v. Greenwood.[26]

In 1861 a number of amendments were made. Among the more important were: the appointment of three examiners-in-chief to hear appeals from the primary examiners of any application that had been rejected twice [27]; the changing of the term of a utility patent to seventeen years from the date of grant [28]; and the provision of terms of three and a half, seven, or fourteen years for design patents at the choice of the applicant. Other features of the 1861 revision provided for the printing of copies of the description and claims of patents and a requirement that to secure damages for patent infringement either the patented article had to be marked as such or the infringer had to have been given notice in some other way of the existence of the patent.

The 1836 Act had provided that the applicant had the right to amend his or her specification if the Patent Office raised objections to it. In 1864 the Supreme Court imposed limits on this right to amend thereby forming the basis for the present rule that no new matter can be added during prosecution of an application. [29]

In 1866, the Supreme Court, in the case of Suffolk Mfg Co v. Hayden,[30] laid the foundation for the modern doctrine of double patenting by holding that where the same inventor held two patents for the same invention, the second one was void.

In 1870 the legislation relating to patents was consolidated into a single act but without many significant amendments as to substance. Among the changes that were made were the following: removal of the requirement that if a patent had been granted abroad a U.S. application had to be filed within six months and replacement by a provision that the U.S. patent must expire at the same time as the foreign patent, subject to a maximum term of seventeen years from the grant of the U.S. patent; codification of a requirement that the specification described the best mode known to the applicant for "applying the principle" of his invention; set up a mechanism for resolving disputes as to who had first invented a particular invention (by creating the post of an "examiner in charge of interference"). It was also made clear that any public sale or use of the invention before the start of the two year grace period was destructive of novelty irrespective of whether that sale or use was by the applicant for the patent.

The 1870's and 80's were a period in which many international organizations were created. Among them was the Paris Convention for the Protection of Industrial Property which came into being in 1883 and which the United States joined in 1887. Its most important provision was to give applicants who were nationals or residents of one member state the right to file an application in their own country and then as long as an application was filed in another country that was a member of the treaty within a specified time, to have the date of filing in the home country count as the effective filing date in that other country. [31] The United States became a member of the Paris Convention on May 30, 1887. [32]

The 1890's saw two developments that, while not directly applicable to patents had a significant effect on the development of patent law: the passage of the Sherman Act in 1890 forming the basis for antitrust law and of the Evarts Act in 1891 creating the Circuit Courts of Appeals. In 1893 appeals from the Patent Office were transferred to the newly created Court of Appeal for the District of Columbia. [33]

In 1897 some of the statutory bars to the grant of a patent were revised: 1) if a foreign patent had already granted, a U. S application had to be made within seven months of filing of the foreign [34] and 2) it was made clear that prior knowledge or use was only a bar if it occurred in the United States before the applicant had made his invention.

In 1925 responsibility for the Patent Office was transferred to the Department of Commerce and Labor.

In 1929, appellate review of decisions of the Patent Office was transferred from the Court of Appeals for the District of Colombia to the newly created Court of Customs and Patent Appeals.

In 1930, the Plant Patent Act provided for the possibility of patent protection for asexually reproduced plants.

The 1930's and 40's (i.e. during the depression and World War II), was one in which the courts were generally not sympathetic to patents. Indeed in 1941, in Cuno Engineering v. Automatic Devices Corp.[35] the Supreme Court suggested that to be patentable an invention must "reveal the flash of creative genius not merely the skill of the calling".

In 1939 the two year grace period that had existed since 1839 with respect to some statutory bars was reduced to one year on the ground that "under present conditions two years appears unduly long and operates as a handicap to industry."

In 1940, the duration of the grace period relating to acts of prior use or prior publication by the inventor which were to be excused as novelty-destroying acts was reduced from two years to one.

In 1946, the law was amended to overrule the Supreme Court's decision in Electric Storage Battery v. Shimadzu[36], which had applied the U.S. laws "first to invent" principle on a world wide basis. The statute confined the first to invent principle to situations where evidence of the invention could be found in the United States.

The basic structure of the present law was adopted in 1952. [37] The two major changes made at that time were to include in the statute for the first time a requirement that to be patentable an invention had not only to be novel, thereby codifying a century of case law, and to include a definition of infringement, which had hitherto been left to the courts. [38] Other changes included a minor change in the definition of what constituted patentable subject matter by replacing the eighteenth century word "art" by "process"; an express statement that when an invention involved a combination of elements it was possible to define such elements in functional terms (i.e. as a "means for" doing something) [39]; a relaxation 松绑 of the formalities relating to applications by joint inventors and where an inventor cannot be found or refuses to apply for a patent even though bound by contract to do so; imposed a maximum time limit of two years within which to request reissue of a patent with broadened claims 请求带有过宽的权利项的专利reissue; abrogated 废止 the common law rule that a patent could not be partially valid 不能部分无效 and permitted actions to proceed on the basis of valid claims even if there were invalid claims in the same patent.

Since 1952, the law has been amended several times, as is shown in the following chronology, which also includes other events of significance 重大事件 in determining the present shape of the world patent system as it impinges on the United States.

• 1954 Provisions relating to plant patents were amended to make it clear that cultivated sports, mutants, hybrids and newly found seedlings were patentable.
• 1964 Commissioner given the power to accept a declaration in lieu of an oath in "any document" and to give provisional acceptance to a defective document. 35 USC 25 and 26.
• 1965 Presumption of validity applied independently to each claim of a patent 35 USC 282.
• 1966 Supreme Court decision in Graham v. John Deere[40] set out the proper test for deciding whether or not a claimed invention is obvious.
• 1968 Patent Cooperation Treaty signed.
• 1971 Supreme Court decision in Blonder-Tongue v. University of Illinois [41] held that once a patent had finally been held to be invalid after full and fair litigation, that finding could be used as a defense in subsequent litigation on that patent even if the parties differed.
• 1975

  1. Name of "The Patent Office" changed to "The Patent and Trademark Office".

  
  2. Amendments to accommodate the Patent Cooperation Treaty. 35 USC 102(e), 104, 351- 376.

  
  3. Liberalized the law having regard to the writing of claims in multiply dependent form. 35 USC 112.

• 1978

  1. European Patent Office opened.

  
  2. Patent Cooperation Treaty came into effect.

• 1980

  1. Requirement to pay maintenance fees to keep patent in force introduced. 35 USC 154.

  
  2. Special provisions made for inventions made with Federal assistance. 35 USC 200 - 211.

  
  3. Provision made for third parties to cite prior art to USPTO. 35 USC 301.

  
  4. Possibility of requesting reexamination created. 25 USC 302-7.

  
  5. United States rebuffs attempts by developing countries to amend Paris Convention to permit exclusive compulsory licensing.

  
  6. Supreme Court upholds the patentability of a genetically modified bacterium quoting the Congressional report leading up to the 1952 Act that "anything made by man under the sun" should be patentable. [42]

• 1982

  1. Applications permitted to be filed without signature by the inventor as long as the inventor had authorized the application to be filed. 35 USC 111

  
  2. Law relating to correction of wrongly named inventors liberalized. 35 USC 116.

  
  3. Court of Appeals for the Federal Circuit created. 35 USC 141, 28 USC 1295. [43]

  
  4. Term of all design patents fixed at fourteen years from grant. 35 USC 173.

  
  5. Arbitration of disputes relating to patent infringement or validity authorized 35 USC 294.

  
  6. It became possible for United States applicants to request an international search under the PCT by the European Patent Office.

• 1984

  1. Possibility of extending patent term to compensate for delay in securing marketing authority from FDA to sell new drugs for humans. (Waxman Hatch Amendments) [44] 35 USC 156

  
  2. Protection from finding of obviousness over work of co-employees etc. 35 USC 103 (c).

  
  3. Clarification that to be a joint inventor the inventors did not have to work together or each be an inventor of subject matter of every claim. 35 USC 115(a).

  
  4. Settlement of interferences by arbitration became permissible. 35 USC 135(d).

  
  5. Definition of infringement amended to include exports of kits of parts that can be used to make a product which if made in the U.S. would be an infringement of a U.S. Patent. [45] 35 USC 271(f)

  
  6. Boards of Patent Appeals and Interferences consolidated into a single Board of Patent Appeals and Interferences. 35 USC 141.

  
  7. Statutory Invention Registration scheme introduced 35 USC 157.

  
  8. United States succeeds in causing inclusion of intellectual property issues in Uruguay Round of GATT negotiations.

• 1987

  1. United States implements Chapter II of PCT. 35 USC 362.

  
  2. It became possible for United States' applicants to request an international preliminary examination under the PCT by the European Patent Office.

• 1988

  1. Possibility of extending patent term to compensate for delay in securing marketing authority from FDA to sell new drugs for animals. 35 USC 156.

  
  2. Requirements for securing permission to file patent application abroad if on file in U.S. for less than six months relaxed to some extent. 35 USC 184 and 185.

  
  3. Definition of infringement amended to include importation into the United States of products made abroad by a process covered by a U.S. patent and to reverse the burden of proof in certain cases of alleged infringement of a process patent. (Process Patents Amendment Act) 35 USC 271(g), 35 USC 287, 35 USC 295.

  
  4. Definition of infringement amended to include application to FDA for marketing approval of a patented drug to be effective before the expiration of the patent but to remove from patent infringement acts relating to collecting data for use in submissions to the FDA for marketing approval of a drug etc. 35 USC 271(e).

  
  5. Patent Misuse Reform Act made it clear that patent was not unenforceable for misuse on the basis that patentee had refused to license the patent or on the basis of tying arrangements unless the patentee had market power in the relevant market. 35 USC 271(d).

  
  
• 1990 Extension of definition of patent infringement to acts in outer space on a "space object or component thereof under the jurisdiction or control of the United States". 35 USC 105
• 1992 State governments made liable for acts of patent infringement. 35 USC 271(h), 35 USC 296
• 1993 Extension of right to prove prior invention to acts carried out in NAFTA countries (35 USC 104)
• 1994

  1. Uruguay Round of negotiations for revision of the General Agreement of Tariffs and Trade (GATT), concludes an agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which include enforceable minimum standards for patent protection.

  
  2. Extension of right to prove prior invention to acts carried out in WTO countries (35 USC 104)

  
  3. Introduced the possibility of filing provisional patent applications. 35 USC 111(b) and 119(e)

  
  4. Subject to transitional provisions, the term of a patent is now twenty tears from its earliest filing date (instead of seventeen years from grant), subject to the possibility of extension to compensate for delays due to interferences or the need to appeal in order to secure the grant of the patent. 35 USC 154

  
  5. Definition of infringing acts extended to include offers for sale and acts of importation. 35 USC 271

  
  6. Reversal of burden of proof in certain cases where infringement of process patent is alleged. 35 USC 295

  
  
• 1995 Protection of biotechnology processes from finding of obviousness if it is for the production of new and nonobvious product. (35 USC 103 (b))
• 1996 Removal of remedies for infringement of patents for surgical processes. (35 USC 287(c).
• 1998 The Court of Appeals for the Federal Circuit in State Street Bank v. Signature Financial.[46] holds that there is no prohibition in U.S. law on patents for business methods as long as they are new, useful and non-obvious.
• 1999

  1. The 1992 amendment to make state governments liable for act of patent infringement is held to be an unconstitutional abridgement of the states' sovereign immunity in Florida Prepaid Postsecodary Education Expense Board v. College Savings Bank. [47]

  
  2. The Intellectual Property and Communications Omnibus Reform Act of 1999 is passed. This law makes a number of amendments to the United States Patent Law and also includes provisions intended to curtail cybersquatting and to deal with satellite home viewing and rural local television signals. The changes to the United States Patent Law include providing for early publication of patent applications where equivalent applications are published abroad, the protection of inventors using the services of invention promotion services and first inventor (prior user) defense for prior users of business methods. Other changes were also made to the US Patent Law. You can learn more by referring to the following articles: US Patent Law Amendments 1999 and United States - 1999 - 2000 Revisions of the Patent Law and Rules.

• 2001 The first publication of a pending United States Patent Application, as provided for by the 1999 amendment, occurs on March 15, 2001.