Patents: Novelty

1
Patents Novelty Statutory Bars

• Fall 2005
• Prof. Loren

2
Patentability Requirements
?

• Patentable subject matter
• Utility (usefulness)
• Written description Enablement ( 112)
• Novelty ( 102)
• Statutory bars
• Non-obviousness / inventive step ( 103)

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Novelty, Nonobviousness, Statutory Bars

• All reasons why a patentee is not entitled to a
  patent
• All reasons why a patent can be declared invalid
• Novelty and Nonobviousness focus on the qualities
  the claimed invention must have, as of the date
  of invention, to be patentable
• Statutory bars focus on whether some act of
  patent applicant/patentee or another, more than
  one year prior to filing, should bar the patent

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Novelty (Anticipation and Bars)

• Why require?
• ensures that applicant is adding to state of the
  art
• encourages prompt application
• Verify that
• invention has not already been contributed to the
  art by someone else
• inventor has not given the invention to the
  public
• inventor has not commercialized it for too long

5
Is It New ?
Shown in
By
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35 U.S.C. 102(a)

• A person shall be entitled to a patent unless --
• the invention was known or used by others
• in this country only,
• OR
• it was patented
• or described in a printed publication
• in this or a foreign country
• before the invention thereof by the applicant

A
B
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35 U.S.C. 102(b)

• A person shall be entitled to a patent unless --
• the invention was patented or
• described in a printed publication
• in this or a foreign country,
• OR
• it was in public use or on sale
• in this country only
• more than one year prior to the date of the
  applicn

B
A
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Anticipation Its not new

• Claim An X comprising an A, a B, and a C.
• Journal article from before Inventors work shows
  an X with an A, a B, and a C.
• Claim is invalid under section 102(a)
• Journal article anticipates the claim
• Journal article is an anticipatory reference

9
Anticipation Its not new

• Claim An X comprising an A, a B, and a C.
• Journal article from more than 1 year before
  filing date shows an X with an A, a B, and a C.
• Claim is invalid under section 102(b)

10
The analysis

• Determine the possible references (prior art)
• for each one ask are they the right type of prior
  art?
• 102(a) known or used by others in the United
  States
• 102(a) (b) patented or described in a printed
  publication anywhere
• 102(b) in public use or on sale in the United
  States
• for each one ask are they prior? Need to
  compare
• measuring date
• 102(a) date of invention (more complicated that
  you might think)
• 102(b) one year prior to filing (called critical
  date)
• effective date of the prior art
• Does the prior art anticipate the claimed
  invention? (In light of the prior art, is the
  invention novel/barred?) What must the prior art
  contain?

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Rosaire v. National Lead Co. (5th Cir 1955)

• Tech Method of prospecting for oil
• Rosaire Horvitz - we invented it in 1936
• Teplitz and others, working for Gulf Oil
• WHAT?
• WHEN?
• How do we know?
• Search costs for Rosaire Horvitz in 1936?

App. Filed 1939
Claimed invention 1936
1935
12
(No Transcript)
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Rosaire

• D Ct - invalid Ct App - affirmed
• But it was just a failed experiment
• Why doesnt this argument work, on these facts ?
• But Gulf Oil never published Teplitz work
• Why doesnt this argument work ?
• But public did not know about it
• Why doesnt this argument work ?
• Why didnt the Patent Office catch this ?

14
In re Hall (Fed. Cir. 1986)

• Claims to a chemical invention
• Filing date ? Critical date ?
• PTO rejects claims 102(b) publication bar
• What do we know about Foldi thesis?
• Was it the same stuff as the claimed invention?
• Was it a printed publication prior to the
  critical date ?
• Search costs for Hall in 1978 ? Today ?

15
Academic Papers Cases

• In re Bayer (1978)
• Thesis at library, but not yet indexed in
  catalog, not invalidating
• In re Cronyn (1989)
• Thesis at library, index card with name and
  title- kept in name order, not invalidating

16
In re Hall (Fed. Cir. 1986)
INVALID
What does 102(b) add that 102(a) doesnt Already
cover?
Patent
No 102(a) problem
17
Egbert v. Lippmann (1881)

• Applies for a patent in 1866
• Why might the patent be invalid?

18
Egbert v. Lippman(S. Ct. 1881)

• Tech Corset springs / steels
• Sam Barnes first applies for a patent in 03/1866
• Grace period Back to 03/1864
• Public use before March 1864?
• Who knew what, when ?
• How many units must be used for public use ?
• How many people must use it for public use ?
• Can we infer a secrecy obligation here ?

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Egbert

• p. 159
• They were not presented for the purpose of
  experiment, nor to test their qualities. The
  invention was at the time complete, and there is
  no evidence that it was afterwards changed or
  improved.

20
Elizabeth v. American Nicholson(S. Ct. 1878)

• Tech Wooden block pavement system
• Nicholson
• Files a caveat with the Patent Office in 1847
• Builds a test road on Mill-dam Avenue in 1848
• Files patent application in 1854 on paving
  process
• Nicholson Pavement sues City of Elizabeth, NJ
• Public use or experiment ? It is perfectly
  clear that he did not intend to abandon his
  right

21
City of Elizabeth v. Pavement Co. (1877)

• The use of an invention by the inventor himself,
  or of any other person under his direction, by
  way of experiment, and in order to bring the
  invention to perfection, has never been regarded
  as such public use.
• And though, during all that period, he may not
  find that any changes are necessary, yet he may
  be justly said to be using his machine only by
  way of experiment .

22
Elizabeth

• What factors should we use to detect intent ?
• Whether general public can see the invention ?
• Whether the inventor changed the invention ?
• Whether public received benefits from the test ?
• Whether testing is needed to see if the invention
  works ?
• Whether duration of the test was reasonable ?
• Whether inventor kept control over and monitored
  the test ?

23
What must the prior art contain?

• Every element of the claimed invention must be
  found in the prior art reference
• Each claim of the patent is judged separately
• No difference between the claimed invention and
  the reference disclosure as viewed by a person or
  ordinary skill in the field of the invention
• Must be enabling to one skilled in the field
• Novelty is a technical challenge to patentability

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On-Sale

• Two requirements
• The product must be the subject of a commercial
  offer for sale
• Do not need a completed sale
• Must be sale of product not sale of patent
• Invention must be ready for patenting
• Does not need to be completed
• Do not need prototype
• Constructive reduction to practice sufficient
• Starts the one-year clock (in the U.S.)
• Internationally no grace period at all

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Policies underlying 102(b)

• Policy against removing inventions from the
  public which the public is already enjoying as a
  consequence of prolonged sales activity
• Policy favoring prompt and widespread disclosure
  of new inventions
• Policy preventing inventors from commercially
  exploiting the exclusivity of his invention
  substantially beyond the statutorily authorized
  one year period
• Give the inventor a reasonable amount time (one
  year) following sales activity to determine
  whether a patent is worthwhile
• But be careful if international protection is
  desired!!!

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Rules to take away from the Statutory Bars

• Be careful if you offer to sell the invention
  prior to filing for your patent (even if you
  dont think the patent is done) -- the clock
  starts ticking
• Same for publishing (publish and perish)
• Be careful that experimental use is done under
  controlled circumstances, so that the invention
  is not used in the U.S.
• Market testing does not count as experimental use
  of the invention, it triggers the one year clock

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Priority

• Under Current Law
• We dont use a first to file rule
• We use a first to invent rule
• May change soon
• Must have a system for determining first
• Section 102(g)
• We look at who reduced it to practice first
  (without abandoning it)
• We also look at who conceived of it first and
  their diligence in reducing the invention to
  practice