Patent Law Final Exam – Part 1

Law School, Patent,

Question 1.

On May 1, 2005, Mr. Suresh received an e-mail from a friend warning against eating with disposable bamboo chopsticks. The problem, according to the e-mail, was that bamboo chopsticks were saturated with cariogenic chemicals to preserve and whiten the material. A solution to the problem immediately came to Suresh based on his job as a dental hygienist using UV LASER technology to whiten and preserve teeth. Suresh surmised that bombarding raw bamboo sticks with a high-intensity UV LASER could accomplish the preservation and whitening goals without the use of problematic chemicals. The next evening, Suresh tested his ideas using the UV LASER at his employer's office (the dentist). That evening, Suresh made six sets of prototype LASER irradiated chopsticks and placed them on a shelf in the employee break-room. Over the next six-months, Suresh would occasionally test the prototypes to see if they retained their color and germ resistance. On a couple of occasions during that time, he even used the prototypes at a Chinese restaurant downtown. His interest then waned in the project for several months.

In December 2006, Suresh was fired. He then decided to move forward with his chopstick business. Unfortunately, by that time, someone else (StickCo) had separately invented the same thing and already had a product on the market (with considerable commercial success). Suresh quickly filed for patent protection and in April 2008, the PTO granted Suresh a utility patent with claims directed to both "a product comprising a UV LASER treated bamboo chopstick" and also "a method comprising treating raw bamboo with a UV LASER in a manner sufficient to whiten and preserve the material". Suresh then sued StickCo for patent infringement.

In the end, it turned out that the e-mail scare was a hoax. Ordinary chopsticks are actually cheaper to produce and safer to use than Suresh's irradiated chopsticks.

  1. Did Suresh's post-invention activities trigger the statutory bar under 35 U.S.C. §102(b) and render the patented claims invalid?
  2. Based on the prior state-of-the-art discussed, is Suresh's invention nonobvious?
  3. Does Suresh's former employer have any claim to rights in the invention?
  4. Assume that StickCo can prove an invention date of January 1, 2006. Does StickCo have a credible argument under 35 U.S.C. §102(g) that Suresh's patent is invalid?
  5. Assuming that StickCo's version of the chopsticks infringe Suresh's patent, but that StickCo does not have enough money to pay the damages. What other parties could be held liable for the infringement?
  6. Two other similar products were recently released by another manufacturer: (i) A UV LASER treated chopstick that is dark brown in color and that is also chemically treated; (ii) a chopstick that is treated with a BLUE-VIOLET LASER rather than an ULTRA-VIOLET (UV) LASER. Do either of these infringe Suresh's patent?
  7. Patent Office rules require inventors to provide the USPTO with "all information known to be material to patentability." 37 C.F.R. § 1.56. Did Suresh make a mistake by failing to tell the PTO how he came-up with his invention?
  8. When Suresh filed his patent application, the only LASER he had used was the UV LASER from his dentist's office. However, he was confident that other LASERs would probably work just as well, if not better. (i) In the patent application should he have discussed the dentistry LASER? (ii) What about the other (untested) LASERs? (iii) Could Suresh broadly patent "the use of UV LASER radiation to treat an eating utensil, without being limited to the specific machinery or parts of machinery described in the foregoing specification?"
  9. We often think of patents as intended to encourage innovation. Does the granting of patent rights in situations like this (serendipitous invention) do anything to encourage innovation? You might distinguish between this case and one where the patentee conducted an expensive research and development program before inventing.
  10. Are there other patent law issues that should concern Suresh? (Limit your discussion to at-most two additional issues)?