arises from judicial interpretation of the law governing patentable categories of invention, and is based on the notion that one cannot preempt use of laws of nature or mathematical truths. Similarly, one cannot patent an arrangement of information or a writing, as such things do not fall within one of the enumerated categories of inventions eligible to be patented." 462 Once it is determined that an applicant has requested protection for subject matter that is eligible to be patented, the examination process shifts to evaluate the substantive merits of the invention. This evaluation is performed to determine if the invention is "novel" and "non-obvious." The PTO performs this evaluation by comparing the invention undergoing examination to the "prior art." Generally speaking, prior art includes information that is publicly available prior to the filing date of a patent application.463 An invention satisfies the novelty Diamond v. Chakrabarty, supra note 460, at 309 ("new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are 'manifestations of... nature, free to all men and reserved exclusively to none.""); Gottschalk v. Benson, 409 U.S. 63, 72 (1973) ("the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself"); In re Alappat, 33 F.3d 1526, 1542 (Fed. Cir. 1994) (noting that the Supreme Court did not intend to make mathematical algorithms a fourth category of unpatentable subject matter along with Diehr's holding that laws of nature, natural phenomena and abstract ideas, but rather that some types of mathematical subject matter standing alone are only abstract ideas). 462 See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) ("[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability"). 463 Section 102 of Title 35 defines the different categories of prior art to include patents issued prior to the applicant's filing date by the United States or by other countries, patents issued by the United States after but filed prior to the applicant's filing date, printed publications distributed in the United States. or abroad, evidence of public use or public disclosure of the claimed invention in the United States more than one year before the applicant's filing date, and evidence of a sale or an offer to sell the claimed invention in the United States more than one year prior to applicant's filing date. These categories are defined in 35 U.S.C. § 102 (1988): requirement if it differs in any material way from what is known in the "prior art."44 An invention satisfies the nonobviousness requirement if a "person of ordinary skill in the art" would not have viewed the invention as having been obvious in view of the prior art at the time the invention was made. Some flexibility is provided to patent 465 464 (a) the invention was known or used by others in this country, or or (b) the invention was patented or described in a printed .... (e) the invention was described in a patent granted on an (g) before the applicant's invention thereof the invention was Novelty exists unless the prior art completely discloses the invention that is claimed by the patent applicant. For example, if a patent application is filed two years after an article is published in a technical journal which completely discloses the invention claimed in the patent application, the application will be rejected by the PTO on the grounds that the claimed invention lacks novelty over that printed publication through operation of Section 102(b). 465 Section 103 sets forth the nonobviousness requirement, in pertinent part, as follows: A patent may not be obtained though the invention is not applicants in the United States regarding when they must seek protection to avoid losing patent rights due to prior public disclosure of the invention.466 An applicant must also satisfy a number of requirements that govern the contents and form of a patent application. A patent application consists of a specification and claims. The claims of a patent define the metes and bounds of the invention by specifically defining the features of an invention which are protected. Among other things, Section 112 requires that the inventor provide an adequate disclosure of the invention that the applicant has claimed.467 A disclosure is adequate when it enables a person of ordinary skill to "practice" the invention as claimed without undue experimentation or effort.468 Section 112 also title, if the differences between the subject matter sought to be 35 U.S.C. § 103 (1988). 466 Under U.S. law, an inventor may rely on a "grace period" to avoid the otherwise patent-defeating effect of an earlier public disclosure of his or her invention. For example, an inventor may be able to obtain a patent on an invention that was disclosed in a technical journal provided she can establish that she conceived of the invention prior to that disclosure. There is a statutory limit of one year imposed by Section 102(b) on the grace period. This grace period is not available in all countries. As a result, applicants must exercise care before disclosing their invention to avoid forfeiting patent rights in countries other than the United States. 467 Every patent concludes with one or more claims that outline the boundaries of the rights granted by the Government to the patentee. Claims must be commensurate in scope with the disclosure of the applicant, and must be clear and understandable. 468 The first paragraph of Section 112 states: The specification shall contain a written description of the requires that the inventor disclose the "best mode" of practicing the invention known to him. The requirements of Section 112 serve to ensure that the patent provides a high-quality, technically accurate disclosure of the invention. Once issued, a patent grants its owner the exclusive right to prevent others from making, using, offering for sale, or selling the claimed invention in the United States, or importing the claimed invention into the United States.469 A patent owner is given a term of protection that begins on the date the patent is granted and ends 20 years from the date the application leading to the patent was filed.470 The patent owner must assert these rights against a party that performs any of the acts that would infringe the patent. The patent owner has the initial burden of proving that the accused party infringed one or more of the patent claims.471 Patent infringement is established by demonstrating that the accused party has made, used, sold, imported or offered to sell a product that falls within the 469 the best mode contemplated by the inventor of carrying out his See 35 U.S.C. § 154(a)(1) (1988), as amended by Uruguay Round Agreements Act, Pub. L. 103-465, 1994 U.S.C.C.A.N. (108 Stat.) 4809, 4984 ("[e]very patent shall contain... a grant to the patentee... the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof"). 470 The term of patents was changed as part of the Uruguay Round Agreements Act, Pub. L. 103-465, 1994 U.S.C.C.A.N. (108 Stat.) 4809, 4984. Under the former system, patent rights would begin on the date a patent was granted and would end 17 years later. As part of the transition to the new system, the term of patents that were pending on June 8, 1995, or which result from applications pending on that date, will begin on the date the patent was granted and will end on the date that is the later of 17 years from the date of grant or 20 years from the earliest effective filing date of the application leading to the patent. scope of a product patent claim.* Similarly, if a patent has been granted on a process, the patent owner must show that the accused party engaged in activity that would infringe the process claims, or that the accused party made, used, sold, offered to sell or imported a product produced using the claimed process." 473 А A patent owner's failure to promptly enforce its rights once an infringement is discovered can limit his or her remedies or may even preclude enforcement against that party. A party accused of infringement can avoid liability by asserting that the patent does not cover the accused product or process. 474 The accused infringer can also assert that one or more of the patent claims is either invalid475 or that the 472 See 35 U.S.C. § 271(a) (1988), as amended by Uruguay Round Agreements Act, Pub. L. 103-465, 1994 U.S.C.C.A.N. (108 Stat.) 4809, 4984 ("[e]xcept as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent"). 473 The United States allows the holder of a United States patent on a process to enforce its rights against a third party that uses a process patented in the United States outside the territorial boundaries of the United States and then attempts to import a product produced using that patented process. See 35 U.S.C. § 295 (1988). 474 There are two forms of infringement, "literal" and infringement through operation of the "doctrine of equivalents." Literal infringement means that the accused product or process contains each and every element set forth in the patent claims. Infringement through the "doctrine of equivalents" refers to a situation where the accused product or process does not have each of the elements set forth in the claims but the accused product or process "performs substantially the same function in substantially the same way to obtain the same result as the patented invention." The latter form of infringement is intended to address situations where an accused infringer has made insubstantial changes to a product to avoid liability for infringement. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607 (1950). 475 This is most often accomplished by submitting new prior art which was not considered by the PTO in the examination of the application. The accused infringer will typically argue that the new information anticipates or makes obvious the claimed invention. While the statute provides that all claims of a patent are presumed valid, the disclosure of new information that was not considered by the PTO can have significant repercussions when these claims are |