Patent Law and Policy

1
Patent Law and Policy

• University of Oregon Law School
• Fall 2008
• Elizabeth A. Tedesco

Patent Law and Policy, Fall 2008 Class 7,
Slide 1
2
102(g) Novelty

• A person shall be entitled to a patent unless
• (g)(1) during the course of an interference
  another inventor involved therein establishes, to
  the extent permitted in section 104, that
• a before such persons invention thereof the
  invention was
• b made by such other inventor and
• c not abandoned, suppressed, or concealed, or
• (2) a before such person's invention thereof,
  the invention was
• b made in this country by another inventor who
  
• c had not abandoned, suppressed, or concealed
  it.
• 3 In determining priority of invention under
  this subsection, there shall be considered not
  only
• a the respective dates of conception and
  reduction to practice of the invention, but also
• b 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.

Patent Law and Policy, Fall 2008 Class 7,
Slide 2
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102(g) Novelty

• Rules summarizing the priority of invention
• The first to reduce the invention to practice
  usually has priority.
• Filing a valid application constitutes a
  constructive reduction to practice.
• The first to conceive may prevail over the first
  to reduce to practice if the first to conceive
  was diligent from a time prior to the other
  inventors conception through to her own
  reduction to practice (either actual or
  constructive).
• Any reduction to practice that has been
  abandoned, suppressed, or concealed is
  disregarded.

Patent Law and Policy, Fall 2008 Class 7,
Slide 3
4
Basic Priority Scenarios

• Scenario 1
• A COA RA
• B COB RB
• Jan. Feb. Mar. Apr. May June July Aug.

A Wins!

• Scenario 2
• A COA RA
• B COB RB
• Jan. Feb. Mar. Apr. May June July Aug.

A Wins!
Patent Law and Policy, Fall 2008 Class 7,
Slide 4
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Basic Priority Scenarios

• Scenario 3
• A COA D -------------------------------
  --? RA
• B COB RB
• Jan. Feb. Mar. Apr. May June July Aug.

A Wins!

• Scenario 4
• A COA D ---------------------------?
  RA
• B COB RB
• Jan. Feb. Mar. Apr. May June July Aug.

B Wins!
Patent Law and Policy, Fall 2008 Class 7,
Slide 5
6
Brown v. Barbacid (2002)

• Claimed Assay for identifying anti-cancer
  compounds that inhibit FT, which adds farnesyl,
  which activates the ras protein causing cancerous
  growth.
• Timeline
• Did Brown reduce to practice in experiments on
  Sept. 20th or 25th, 1989?
• Barbacid reduced to practice no later than March
  6, 1990
• Brown application had priority date (per related
  patent) of April 18, 1990
• Barbacid application filed May 8, 1990
• Barbacid patent issued February 9, 1993
• Conception is the formation in the mind of the
  inventor of a definite and permanent idea of the
  complete and operative invention, as it is
  thereafter to be applied in practice. A
  conception must encompass all limitations of the
  claimed invention.
• Reduction to practice requires the inventor (i)
  to have practiced an embodiment of the invention
  encompassing elements of the interference count,
  and (ii) to have appreciated that the invention
  worked for its intended purpose.

Patent Law and Policy, Fall 2008 Class 7,
Slide 6
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Peeler v. Miller (1976)

• Timeline
• March 14, 1966 Miller reduces to practice an
  improved hydraulic fluid.
• April 1966 Miller discloses the invention to
  his employer, the Monsanto Company.
• Jan. 4, 1968 Peeler files a patent application
  on a fluid identical to Millers discovery.
• Oct. 1968 Two and a half years after Millers
  discovery, the Monsanto Company restarts work to
  acquire patents on this and other company
  discoveries.
• April 27, 1970 Miller files a patent
  application.
• July 6, 1971 The PTO issues a patent to Peeler.
  
• Proof of specific intent to suppress is not
  necessary where the time between actual reduction
  to practice and filing is unreasonable. This
  unreasonable delay may raise an inference of
  intent to suppress.

Patent Law and Policy, Fall 2008 Class 7,
Slide 7
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Multiple Interference Paradox

• Inventor
• A CO D ---------------------------------------
  ----? R
• B CO D --------------? R
• C CO R
• Jan. Feb. Mar. Apr. May June July Aug.
• Who wins an interference between A and B?
• Who wins an interference between B and C?
• Who wins an interference between A and C?
• No single party beats the other two cleanly.

B wins. C wins. A wins.
Patent Law and Policy, Fall 2008 Class 7,
Slide 8
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Dow Chemical Co. v. Astro-Valcour, Inc. (2001)

• Timeline
• April 19, 1968 Non-party JSP receives a patent
  for a process to produce foam using non-CFC
  blowing agents (the Miyamoto patent).
• Aug. 22, 1984 After purchasing a license to the
  Miyamoto patent, AVI makes foam with isobutane
  using the Miyamoto process.
• Aug. 1984 - Sept. 1986 AVI builds facility to
  produce the invention.
• Aug. 24 - 28, 1984 Dr. Park conceives a similar
  process and product.
• Sept. 1984 Park reduces to practice.
• Dec. 1985 Park files.
• Sept. 1986 AVI begins commercial production of
  its new foam.
• In cases in which an invention is disclosed to
  the public by commercialization, courts have
  excused delay upon proof that the first inventor
  engaged in reasonable efforts to bring the
  invention to market.

Patent Law and Policy, Fall 2008 Class 7,
Slide 9
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In re Moore (1987)

• Timeline
• Before Dec. 1963 Moore prepares a new compound.
  He does not yet know a use for it.
• Dec. 1963 A British chemistry journal publishes
  an article describing the new chemical compound
  without describing a use for it.
• Nov. 24, 1964 Moore files a U.S. patent
  application claiming the compound. Note He must
  now have a use for it.
• An applicant need not be required to show any
  more acts with regard to the subject matter
  claimed than can be carried out by one of
  ordinary skill in the pertinent art following the
  description contained in the reference.
• An applicant may be compelled to prove only that
  he had prior possession of the thing itself in
  order to remove a reference which shows no more
  than that to the public.

Patent Law and Policy, Fall 2008 Class 7,
Slide 10
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Foreign Activities to Establish Priority of
Invention

• Paris Convention
• An inventors filing date in a foreign country
  may constitute an effective U.S. filing date
  pursuant to the Paris Convention as implemented
  in 35 U.S.C. 119 for priority purposes.
• An application filed in another Paris Convention
  country shall have the same effect as the same
  application would have if filed in this country
  on the foreign filing date, if the application
  in this country is filed within twelve months
  from the earliest foreign filing date.
• TRIPs
• Previously, inventor work outside of the United
  States was not recognized. Pursuant to 104, all
  inventive work inside the U.S. and any other WTO
  country is treated equally. Work in non-WTO
  countries is still not recognized.
• TRIPs forbids countries from discriminating as
  to the place of invention for parties seeking
  patent rights, but it does not expressly forbid
  geographic discrimination in defining prior art.
  

Patent Law and Policy, Fall 2008 Class 7,
Slide 11
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Westinghouse Machine v. General Electric (1913)

• Timeline
• 1901-02 Armstrong conceives an improved control
  for railcar induction motors.
• Spring 1904 De Kando constructs the same
  invention, which he then implements on a railway
  in Italy.
• May 5, 1904 After viewing De Kandos invention
  in Italy and receiving from him a detailed
  written description of the control, Waterman
  brings this information to the U.S.
• June 19, 1905 In the U.S., Waterman explains De
  Kandos invention to the American Institute of
  Electrical Engineers. Waterman had spent the
  previous year explaining the invention to
  numerous U.S. engineers who were capable of
  understanding the technology.
• June 28, 1905 Armstrong files his U.S. patent
  application for an invention similar to De
  Kandos. General Electric is Armstrongs
  assignee.
• July 3, 1906 De Kando files his patent
  application. His assignee is Westinghouse.

Patent Law and Policy, Fall 2008 Class 7,
Slide 12