Posts Tagged: "1952 Patent Act"

“The Supreme Court has told us, and told itself, a particular story — a story based in history to justify its current regime,” Lefstin said near the top of his presentation, which was titled Invention and Discovery: A Fable of History. “But when one starts to inquire into that history, you find the story is quite different than the court has led us to believe.” According to Lefstin, this story and its diversion from a factual basis in history began with the Supreme Court’s 2012 decision in Mayo v. Prometheus, the case which established the current legal concept that a further inventive step was required in order to transform a fundamental principle or law of nature into patent-eligible subject matter. “In particular, what the Court has made clear is that if one has made a scientific discovery, one needs something more than known, routine, or conventional activity in order to transform that into a patent-eligible invention,” Lefstin said.

On Tuesday, March 21st, the U.S. Supreme Court issued a decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, a case which looked at the issue of whether and to what extent the defense of laches may bar a claim for patent infringement brought within the six-year statutory limitations period, as defined by 35 U.S.C. Section 286. In a 7-1 vote, the Supreme Court decided that the equitable defense of laches cannot be invoked against claims for infringement occurring during the statutory period.

In order for a patent applicant to satisfy the utility requirement the claimed invention must be “useful” for some purpose either explicitly or implicitly. Utility problems normally arise in one of two scenarios. First, it is not apparent why the invention is “useful,” which can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. Second, there are rare instances where an assertion of a specific and substantial utility for an invention is simply not credible.