International Intellectual Property Prof. Manheim Spring, 2007 Patent Utility & Novelty Copyright © 2007

Spring, 2007IIP2 Patentability Patentability Element US Law 35 USC TRIPsEPC Subject Matter § 101Art. 27Art. 52Art. 52, 5353 Utility § 101“Art. 57 Novelty § 102(a)“Art. 54 Statutory Bar § 102(b)“Art. 55 Non-Obvious ness § 103“Art. 56

Spring, 2007IIP3 Utility  US Const. Art. I, §8, par. 8  “to promote the Progress of Science and useful Arts”  Originalist reading: arts meant technology/industry  35 USC §101 (“new and useful process,” etc)  “well established utility” required  TRIPs Art. 27 (EPC Art. 52)  “capable (susceptible) of industrial application”  EPC Art. 57  An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture

Spring, 2007IIP4 Utility under US Law  “Well-established” Utility [MPEP 2107] 1. if a person of ordinary skill in the art would immedi- ately appreciate why the invention is useful, and 2. the utility is specific, substantial, and credible  Specific Utility (operability)  Does invention work as specified?  Substantial Utility  Particular practical purpose  excludes ‘‘throw-away" inventions  Process patents must produce useful products perpetual motion machine unpatentable - doesn’t work

Spring, 2007IIP5 Utility under US Law  Credible Utility  from perspective of one of ordinary skill in the art in view of disclosure & other evidence of record  Social Utility (beneficial value)?  US patent law generally amoral  But some devices (e.g., gambling) have been rejected under this standard  Remember: A patent does not give the patentee the right to practice the invention  She must still comply with all regulatory requirements  A patent merely excludes others

Spring, 2007IIP6 Utility under US Law  Utility must be affirmatively disclosed  A specific application must appear  Particularly important w/ process patents  broad patent scope (claiming unspecified products) is tantamount to patenting an idea  creates unknown range of applications  claims limited to demonstrated utility  no speculative or anticipated claims  “A patent is not a hunting license” Abe Fortas  If utility not disclosed, also fails § 112 (must “teach how to use the invention” )

Spring, 2007IIP7 Utility vs. Industrial Application  Inventions of personal application only  Ex: a method of contraception... to be applied in the private and personal sphere of a human being"  Rejected in T 0074/93T 0074/93  Draft Substantive Patent Law Treaty (2004) Draft Substantive Patent Law Treaty  Art. 12(4) A claimed invention shall be.. considered industrially applicable (useful) if it A. can be made or used for exploitation in any field of [commercial][economic] activity B. … in any kind of industry [in broadest sense] C. has a specific, substantial, & credible utility Alternatives from SCP 2004

Spring, 2007IIP8 Examples of Really Useful Devices Method of Exercising a Cat Santa Claus Detector Santa Claus Detector Toe Puppet Toe Puppet Motorized Ice Cream Cone Motorized Ice Cream Cone

Spring, 2007IIP9 Problem 3-13  US and EU Patent apps for low starch rice  Claims based on refined (unpublished) TK from Sri Lanka  Does patent application satisfy novelty in US? in EU?

Spring, 2007IIP10 Novelty in US  35 USC § 102: A person shall be entitled to a patent unless: 35 USC § 102  a) 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  TK from other countries not a bar to US patentability unless published  Student notes would suffice if “published”

Spring, 2007IIP11 Novelty - US  102(a) Anticipation [Prior to Invention]  The invention is substantially known before its invention by inventor  Enough of the invention has already been disclosed to enable one skilled in the art to practice it  “That which infringes, if later, anticipates, if earlier”  Even independent invention by inventor does not add to the public knowledge base  102(b) Statutory Bar [Prior to Application]  Bars to patent despite novelty of invention  Inventor has 12 months after public disclosure

Spring, 2007IIP12 Anticipation  Prior Art  Documentary evidence of prior knowledge by others (Domestic or Foreign)  Prior patent  Publication (“reference” must be enabling)  Nondocumentary evidence of prior knowledge by others (Domestic only)  Prior application (eventually published or granted)  Public knowledge  Use  Invention by another unless suppressed, abandoned, concealed Invention Priority

Spring, 2007IIP13 Statutory Bar  Events > 12 months prior to application  Policy: promote diligence & speedy disclosure  Applies both to acts of inventor and others  Domestic & Foreign Bars  Prior patent  Publication  Domestic Bars  Public Use  On Sale  Efforts to commercialize don’t have to succeed Or foreign application, if granted before domestic application filed Application Priority These events indicate abandonment

Spring, 2007IIP14 Other Loss of Rights - US  102(c) abandonment  102(d) first patented outside US on foreign application filed > 12mo. before US app.  102(e) described in another’s application filed before invention by applicant, and  (1) other app published per § 122(b) [PCT], or  (2) other app eventually granted  Int app only if published in English & US designated  102(f) applicant is not the inventor

Spring, 2007IIP15 Other Loss of Rights - US  102(g) first invented by another, and not abandoned, suppressed, or concealed -  (1) proved during interference proceeding, or  (2) “invented” by earlier conception (despite later reduction to practice), coupled with reasonable diligence from a time prior to conception by applicant

Spring, 2007IIP16 Novelty - EU  EPC 54 EPC 54  (1) “An invention shall be considered to be new if it does not form part of the state of the art”  (2) “The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.”  Foreign TK can operate as bar under EPC  Use of low starch rice by Sri Lankan tribes and oral lecture by Prof. Varuni are both prior art

Spring, 2007IIP17 Neem Tree (EPO 2001)  Facts:  WP Grace obtains patent from EPO for fungi- cide based on the Indian Neem Tree  Priority Date = 1989  IN Field trials ‘85 & ‘89  “Use” of Neem oil extract  Patent uses different formulation of Neem oil  IN trials = “prior art”  “available to the public”  Claims are not novel

Spring, 2007IIP18 Novelty  Grace’s Neem Oil “invention”  Not novel in Europe (not patentable)  Novel in US (patentable)  Does this distinction make any logical sense?  Why don’t foreign uses constitute prior art in US?  To promote “importation” of foreign inventions, or parochialism, or too burdensome for inventors?  TRIPs Art 27(1) “invention” must be “new” TRIPs Art 27(1)  Ambiguous on geographical limitations

Spring, 2007IIP19 Patent Applications as Prior Art  If Patent 2 T6, Patent 1 is Prior Art no matter where P1 was filed/issued  35 USC 102(a) EPC 54(3)  If Patent 2 T4, Patent 1 is Prior Art no matter where P1 was filed  35 USC 102(e) - if foreign filing must eventually issue  If Patent 2 T2, Patent 1 is Prior Art only if filed in US (on T1 date) and later published  35 USC 102(e) Patent 1 filed T1 Patent 2 filed T2 Patent 1 issued T3 T5 Patent 1 published Patent 2 filed T4 Patent 2 filed T6

Spring, 2007IIP20 Problem 3-14  Timeline  30 Nov 04 - G files patent app in DE (patent 1)  1 Feb 05 - L files patent app in X (patent 2)  1 Dec 05 - G files patent app in X (patent 1)  Paris priority date of 30 Nov 04  L’s patent 2 app does not defeat G’s patent 1 app  “defensive use” of priority dates  Validity of L’s patent 2  Is patent 1 application in DE prior art in X?  “offensive use” of priority dates  Yes EU; No US (no priority date for offensive use) §102(e)