Patents IIIPatents IIINovelty and Loss of RightsNovelty and Loss of Rights

Class 13 NotesClass 13 Notes

Law 507 | Intellectual Property | Spring 2004Law 507 | Intellectual Property | Spring 2004Professor WagnerProfessor Wagner

22/18/18

Today’s AgendaToday’s Agenda

1. Novelty

2. Loss of Rights … or Statutory Bars

a) Prior Publications

b) Prior Public Use or On Sale

c) The Experimental Use Exception

d) Priority (among competing inventors)

33/18/18

Review: Requirements for Review: Requirements for PatentabilityPatentability

A valid patent must be . . .A valid patent must be . . .

1.1. Fully disclosed (§ 112)Fully disclosed (§ 112)

2. Novel (§ 102)

3. Not subject to a statutory bar (§ 102)

4. Nonobvious (§ 103) (Class 14)

5. Within the appropriate subject

matter. (Class 17)

44/18/18

Novelty & Statutory BarsNovelty & Statutory Bars

35 U.S.C. § 102. - Conditions for Patentability; 35 U.S.C. § 102. - Conditions for Patentability; Novelty and Loss of Right to PatentNovelty and Loss of Right to Patent

A person shall be entitled to a patent unless —A person shall be entitled to a patent unless —(a)[Novelty] the invention was known or used by others

in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b)[Statutory Bars] the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c)— (f) omitted(g) [Priority] …

55/18/18

Basics of Novelty/AnticipationBasics of Novelty/Anticipation

1.1. Goal: deny patentability to inventions Goal: deny patentability to inventions that are not “new”that are not “new”• “New” is defined by § 102

2.2. An invention that is not novel is An invention that is not novel is “anticipated” by “prior art”“anticipated” by “prior art”• Anticipation requires:

1. Description of each element of the claim (in one reference)

2. Adequate detail to inform PHOSITA

3.3. To be “prior art”, a reference must be To be “prior art”, a reference must be “available” before the “critical date”“available” before the “critical date”• 102(a): critical date = date of invention• 102(b): critical date = date of filing - 1 year

66/18/18

Novelty/Prior UseNovelty/Prior Use

Rosaire v National LeadRosaire v National Lead (1955) (1955)• What is the ‘critical date’ of the R&S patents?• What did Teplitz do? (So what is the real

question here?)• Is the Teplitz use a ‘public use’?

o What is the relevance of the fact that Teplitz didn’t file for a patent for several years?

Consider: Consider: W.L. Gore & AssocsW.L. Gore & Assocs.: secret use of .: secret use of invention (machine), but openly sold invention (machine), but openly sold productsproducts• Is this an invalidating public use?

77/18/18

Novelty/Prior UseNovelty/Prior Use

1.1. Hasn’t the patentee in these cases Hasn’t the patentee in these cases conferred a benefit on society? (By conferred a benefit on society? (By publishing something that otherwise publishing something that otherwise would be unknown?)would be unknown?)

2.2. Why does the court require Why does the court require corroboration of prior uses? (Does this corroboration of prior uses? (Does this undermine the requirement?)undermine the requirement?)

3.3. Reconsider Reconsider RosaireRosaire: What if Teplitz : What if Teplitz had had accidentallyaccidentally used the Rosaire used the Rosaire process, without understanding it?process, without understanding it?

88/18/18

Statutory Bars: Printed Statutory Bars: Printed PublicationsPublications

In re HallIn re Hall (1986) (1986)• Will the Foldi reference anticipate the invention?

1. Is it appropriate ‘prior art’?2. Does it fully describe the invention?

• Why is the Foldi reference good prior art?• What is the ‘touchstone’ of the ‘printed publication’

requirement?

Consider the dates (which section applies?):Consider the dates (which section applies?):• Invention: January 1975• Filing date: February 1979• Foldi ‘publication’ date:

1. November 19742. November 1978 3. November 1979

99/18/18

Statutory Bars: Printed Statutory Bars: Printed PublicationsPublications

Are the following ‘printed publications’?Are the following ‘printed publications’?1. Undergraduate Senior Theses, kept on the

shelves of the university library2. Web pages3. Internal company memoranda4. Artifacts in a ‘private’ museum (known in

the industry)

1010/18/18

Statutory Bars: Public UseStatutory Bars: Public UseEgbert v Lippman (1881)Egbert v Lippman (1881)

• What is the ‘critical date’? (Note the law change.)• Who used the invention prior to the critical date?

o Consider the relationship: Is this a ‘public’ use?o Did anyone else actually see the invention in

operation?• How many items can trigger a ‘public use’?• How many people need to use the items?

1.1. What is the key inquiry behind the public use What is the key inquiry behind the public use bar? (Consider the goal of § 102)bar? (Consider the goal of § 102)a) What if you use/show the invention, but only to close

friends or under a veil of secrecy?b) What if someone steals your invention and uses it

publicly? (Look @ Evans Cooling)

1111/18/18

Statutory Bars: On SaleStatutory Bars: On Sale

On Sale Bar: On Sale Bar: a sale or offer for sale prior to the

critical date• Sale: standard commercial sale or offer• Sale must be of ‘the invention’• Third-party sales, ‘secret’ sales are sales• Invention need only be ‘ready for

patenting’ to trigger the bar (either ‘reduction to practice’ or drawings and descriptions sufficient to enable)

1212/18/18

Experimental Use ExceptionExperimental Use Exception

City of Elizabeth (1877)City of Elizabeth (1877)• What is the critical date?• When did the invention begin use?• Why should this not be a violation of the

statutory bar?

• Aren’t patentees able to delay filing with ‘endless’ experimentation?

• How is this different from Egbert (corsets)?o Does this suggest strategic advice to patentees?

1313/18/18

Priority of InventionPriority of Invention35 U.S.C. § 102(g)35 U.S.C. § 102(g)A person shall be entitled to a patent unless . . .A person shall be entitled to a patent unless . . .

(g)(1) during the course of an interference … another inventor involved therein establishes … that before such before such person’s invention thereof the invention was made by person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or such other inventor and not abandoned, suppressed, or concealedconcealed, or

(2) before such person’s invention thereof, the invention before such person’s invention thereof, the invention was made in this country by another inventor who had was made in this country by another inventor who had not abandoned, suppressed, or concealednot abandoned, suppressed, or concealed itit. .

In determining priority of invention under this In determining priority of invention under this subsection, there shall be considered not only the subsection, there shall be considered not only the respective dates of conception and reduction to practice respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, who was first to conceive and last to reduce to practice, from a time prior to conception by the other.from a time prior to conception by the other.

1414/18/18

Priority of InventionPriority of Invention

Section 102(g) establishes the US system Section 102(g) establishes the US system as a “first to invent” system.as a “first to invent” system.• Virtually all of the rest of the world has a

“first to file” system.

Consider the relative merits of each Consider the relative merits of each system w/r/t.. system w/r/t.. • Determining the ‘real’ inventor;• Administrative difficulties;• Incentives on the innovation process;

1515/18/18

Priority of InventionPriority of Invention

The Basic Rule of PriorityThe Basic Rule of Priority

First to ‘reduce to practice’ = First to ‘reduce to practice’ = prioritypriority

• Exception A: Prior conception + reasonable diligence until reduction to practice.

• Exception B: The original inventor abandons, suppresses, or conceals her invention.

1616/18/18

Priority of InventionPriority of Invention

1717/18/18

Priority of InventionPriority of Invention

Griffith v Kanamaru (1987)Griffith v Kanamaru (1987)

Issue: what is meant by ‘reasonable Issue: what is meant by ‘reasonable diligence’?diligence’?• Await confirmation of funding sources• Await matriculation of graduate student

What types of delays are ‘reasonable’?What types of delays are ‘reasonable’?

Key point: assume an inventor does set aside Key point: assume an inventor does set aside her invention for an ‘unreasonable’ her invention for an ‘unreasonable’ time/reasontime/reason• Is she unable to seek a patent? (Under what

circumstances?)

1818/18/18

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Patents IVPatents IVObviousnessObviousness