Direct infringement. Direct infringement occurs in two types: literal and nonliteral. First, as held in Larami, literal infringement occurs when a patent owner meets the burden of establishing infringement by proving that the infringing product meets “every element of … [its patented] claim.” Larami Corporation v. Amron, 27 USPQ2d 1280 (E.D. Pa 1993). Secondly, as held in Graver, non-literal infringement occurs when the accused device “performs substantially the same function in substantially the same way to obtain the same result.” Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950).
Indirect Infringement. Indirect infringement also occurs in two types, jointly: contributory and by inducement. As held in Lucent, contributory infringement occurred when Microsoft sold an infringing patented product, which induced users to use such product as intended. The originator of that patented product is then the indirect infringer. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (2009).
The five primary requirements for patentability are: (1) patentable subject matter, (2) utility, (3) novelty, (4) nonobviousness, and (5) enablement.
1. Patentable Subject Matter. First, for an invention to be patented is that it must be patentable subject matter. Under 35 U.S.C. § 101, the categories for patentable subject matter are broadly defined as any process, machine, manufacture, or composition of matter, or improvement thereof. In Diamond v. Chakrabarty, the Supreme Court found that Congress intended patentable subject matter to "include anything under the sun that is made by man." See Diamond v. Chakrabarty, 447 U.S. 303 (1980);
2. Utility. Secondly, the invention must be useful. See 35 U.S.C. § 101. The PTO has developed guidelines for determining compliance with the utility requirement. The guidelines require that the utility asserted in the application be credible, specific, and substantial. These terms are defined in the Utility Guidelines Training Materials. Credible utility requires that logic and facts support the assertion of utility, or that a person of ordinary skill in the art would accept that the disclosed invention is currently capable of the claimed use.
3. Novelty. Third, the invention must be novel, as described under 35 U.S.C. § 102, consisting of two distinct requirements; novelty and statutory bars to patentability. Novelty requires that the invention was not known or used by others in this country, or patented or described in a printed publication in this or another country, prior to invention by the patent applicant. See 35 U.S.C. § 102(a). To meet the novelty requirement, the invention must be compared to the prior art. The statutory bar applies where the invention was in public use or on sale in this country, or patented or described in a printed publication in this or another country more than one year prior to the date of the application for a U.S. patent. See 35 U.S.C. § 102(b).
4. Nonobviousness. Fourth, the invention must meet the nonobviousness test, as added by Congress in the Patent Act of 1952. The test for nonobviousness is whether the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made. See 35 U.S.C. § 103. In 2007, the Supreme Court, in KSR International Co. v. Teleflex, Inc.,550 U.S. 398 (2007) endorsed an expansive and flexible approach under which "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."
5. Enablement. Fifth, the enablement requirement is directly related to the specification, or disclosure, which must be included as part of every patent application. "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains...to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention." See 35 U.S.C. § 112. At the end of the specification, the applicant lists "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." See 35 U.S.C. § 112. Enablement is understood as encompassing three distinct requirements: the enablement requirement, the written description requirement, and the best mode requirement.
The aforementioned information was extracted, in part, from: https://www.law.cornell.edu/wex/Patent and https://www.uspto.gov.
Source: PatentLYO
