Patents III Novelty and Loss of Rights Class 13 Notes Law 507 | Intellectual Property | Spring 2004 Professor Wagner

2/18 Today’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)

3/18 Review: Requirements for Patentability A valid patent must be... 1.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)

4/18 Novelty & Statutory Bars 35 U.S.C. § Conditions for Patentability; Novelty and Loss of Right to Patent 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] …

5/18 Basics of Novelty/Anticipation 1.Goal: deny patentability to inventions that are not “new” “New” is defined by § An invention that is not novel is “anticipated” by “prior art” Anticipation requires: 1.Description of each element of the claim (in one reference) 2.Adequate detail to inform PHOSITA 3.To be “prior art”, a reference must be “available” before the “critical date” 102(a): critical date = date of invention 102(b): critical date = date of filing - 1 year

6/18 Novelty/Prior Use Rosaire v National Lead (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’? oWhat is the relevance of the fact that Teplitz didn’t file for a patent for several years? Consider: W.L. Gore & Assocs.: secret use of invention (machine), but openly sold products Is this an invalidating public use?

7/18 Novelty/Prior Use 1.Hasn’t the patentee in these cases conferred a benefit on society? (By publishing something that otherwise would be unknown?) 2.Why does the court require corroboration of prior uses? (Does this undermine the requirement?) 3.Reconsider Rosaire: What if Teplitz had accidentally used the Rosaire process, without understanding it?

8/18 Statutory Bars: Printed Publications In re Hall (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?): Invention: January 1975 Filing date: February 1979 Foldi ‘publication’ date: 1.November November November 1979

9/18 Statutory Bars: Printed Publications Are the following ‘printed publications’? 1.Undergraduate Senior Theses, kept on the shelves of the university library 2.Web pages 3.Internal company memoranda 4.Artifacts in a ‘private’ museum (known in the industry)

10/18 Statutory Bars: Public Use Egbert v Lippman (1881) What is the ‘critical date’? (Note the law change.) Who used the invention prior to the critical date? oConsider the relationship: Is this a ‘public’ use? oDid 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.What is the key inquiry behind the public use 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? Evans Cooling)

11/18 Statutory Bars: On Sale 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)

12/18 Experimental Use Exception 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)? oDoes this suggest strategic advice to patentees?

13/18 Priority of Invention 35 U.S.C. § 102(g) A person shall be entitled to a patent unless... before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed (g)(1) during the course of an interference … another inventor involved therein establishes … that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

14/18 Priority of Invention Section 102(g) establishes the US 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 system w/r/t.. Determining the ‘real’ inventor; Administrative difficulties; Incentives on the innovation process;

15/18 Priority of Invention The Basic Rule of Priority First to ‘reduce to practice’ = priority Exception A: Prior conception + reasonable diligence until reduction to practice. Exception B: The original inventor abandons, suppresses, or conceals her invention.

16/18 Priority of Invention

17/18 Priority of Invention Griffith v Kanamaru (1987) Issue: what is meant by ‘reasonable diligence’? Await confirmation of funding sources Await matriculation of graduate student What types of delays are ‘reasonable’? Key point: assume an inventor does set aside her invention for an ‘unreasonable’ time/reason Is she unable to seek a patent? (Under what circumstances?)

18/18 Next Class Patents IV Obviousness