The Novelty Requirement II

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The Novelty Requirement II

• Class Notes February 4, 2003
• Law 677 Patent Law Spring 2003
• Professor Wagner

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Todays Agenda

1. Derivation 35 U.S.C. 102(f)
2. Priority Secret Prior Art 35 U.S.C. 102(g)

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Derivation

• 35 U.S.C. 102(f)
• A person shall be entitled to a patent unless . .
  .
• (f) he did not himself invent the subject matter
  sought to be patented . . .
• This rule is the derivation principle you
  cannot patent an invention you derived from
  another.

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Derivation

• Gambro Lundia v Baxter Healthcare (Fed. Cir.
  1997)
• What are the two components of a finding of
  derivation?
• What is the standard for how much information
  must be communicated?
• Note why require corroboration of conception?
  (What is the practical effect of the
  corroboration requirement on inventors
  testimony?)
• Is there any real difference between the
  communication standard used by the D.Ct. and the
  Gambro court? (What is it?)
• What happens if you prove prior conception by
  another, but the communication does not enable?

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Derivation

• What is the policy behind the derivation rule?
• Contrast the rule with the Inventorship
  requirement.
• Consider the bus hypothetical on p. 467.
• Can you think of reasons we might want to allow
  the eavesdropper to get a patent on the
  invention?
• What if the eavesdropper files a patent
  application for the invention? What happens to
  the true inventor?

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Priority

• 35 U.S.C. 102(g)
• 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 persons invention thereof the
  invention was made by such other inventor and not
  abandoned, suppressed, or concealed, or
• (2) before such persons 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.

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Priority

• 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
• Should we switch to first-to-file?

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Priority

• The Basic Rule of Priority
• Rule First to reduce to practice priority
• Exception A Prior conception diligence until
  reduction to practice.
• Exception B The original inventor abandons,
  suppresses, or conceals her invention.

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Priority
Inventor A Inventor B
Conception Jan. 1, 2001 Jan. 2, 2001
Reduction to Practice Jan. 3, 2001 Jan. 4, 2001
Filing Date Jan. 5, 2001 Jan. 4, 2001
Priority?
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Priority
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Priority Issues

• Fiers v Revel (Fed.Cir. 1993) (Lourie)
• Note conception is a question of law (court is
  free to review de novo on appeal)
• The court adopts a particularistic definition for
  conception of a chemical compound.
• What is it?
• Why do you think Judge Lourie (PhD Chemist)
  adopts this definition? (Do you agree with him?)
• Should enablement be irrelevant to this issue, as
  the Court says?

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Priority Issues

• Burroughs Wellcome v Barr Labs. (Fed. Cir. 1994)
  (Mayer)
• What is the real issue here? (Why?)
• What was Broders and Mitsuyas contribution to
  AZT?
• Why is this insufficient for joint invention?
• When will conception and reduction to practice
  coincide? (Why?)

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Priority Issues

• You conceive of an invention (cold fusion for
  producing electricity) on January 1, and begin
  testing to attempt to reduce to practice.
• On February 1, you determine the invention will
  work to produce electricity.
• On February 1, you determine the invention will
  not generate electricity without the addition of
  a new Compound X.
• What is your date of conception in Case (a)?
  Case (b)?

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Priority Issues

• Reduction to Practice
• DSL Dynamic Sciences (Fed. Cir. 1991)
• Why was the testing sufficient to reduce the
  couplers to practice?
• What is the rule for showing reduction to
  practice?
• An embodiment actually worked for its intended
  purpose.
• Note actual versus constructive RTP.

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Priority Issues

• Abandonment, Suppression, Concealment
• Fujikawa v Wattanasin (Fed. Cir. 1996)
  (Clevenger)
• The question here is whether the 17/15 month
  delay between RTP and filing is abandonment.
• Why is spurring disfavored by the law?
• What kind of facts would be suggestive of
  suppression or concealment?
• Assume you abandon your invention. Can you later
  obtain a patent on it? (What is your date of
  conception/RTP?)
• Note the problem of 102(c).

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• Next Class
• Obviousness
• The Graham Framework