Novelty II – Old an New

Patent LawProf Merges

9.27.2012

Agenda

• AIA overview; In re Klopfenstein: summary

• Section 102(e)–New “section 102(e)” in AIA

• Section 102(f): derivation

§ 102. Novelty and loss of right to patentA person shall be entitled to a patent unless

(a) the invention was known or used by others … before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication

…, more than one year prior to the date of the application for patent in the United States, or . . . .

§ 102. Novelty and loss of right to patentA person shall be entitled to a patent unless (a) the invention was [i] known or used by others in this

country, or [ii] patented or [iii] described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) 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 . . . .

§ 102. Novelty and loss of right to patentA person shall be entitled to a patent unless (a) the invention was [i] known or used by others in this country,

or [ii] patented or [iii] described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was [i] patented or [ii] described in a printed publication in this or a foreign country or in [iii] public use or [iv] on sale in this country, more than one year prior to the date of the application for patent in the United States, or . . . .

AIA: Prior Art• § 102(a) NOVELTY; PRIOR ART.—A person shall be

entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or(2) the claimed invention was described in a patent issued [to another] … or in [another’s] application for patent published … [that] was effectively filed before the effective filing date of the claimed invention.

• Five categories of prior art in 102(a)(1) and a sixth category in 102(a)(2).

AIA: Prior Art• What’s new in these five categories of prior art?

• Answer:

• Timing (of course) – art is now “prior” if it is before the effective filing date, not the invention date (consistent w/ first-to-file philosophy).

• End of Geographic Restrictions – all categories are global, including public use and on sale.

• Addition of “otherwise available to the public”– similar to old “known … by others”.

First-to-File System: Prior Art• What’s old in these five categories of prior art?

• Answer:

• Much is old.

• E.g., old “printed publication” cases still apply, though the addition of “otherwise available to the public” category might make some cases easier.

In re Klopfenstein

• 380 F.3d 1345 (Fed Cir 2004)

• “Printed Publications” for the modern era . .

• Page 405

In October 1998, the appellants, along with colleague M. Liu, presented a printed slide presentation entitled "Enhancement of Cholesterol-Lowering Activity of Dietary Fibers By Extrusion Processing" at a meeting of the American Association of Cereal Chemists ("AACC"). The fourteen-slide presentation was printed and pasted onto poster boards. The printed slide presentation was displayed continuously for two and a half days at the AACC meeting.

AACC 1998 Annual Meeting Poster # 127. Click title to see full text of poster.

Enhancement of cholesterol-lowering activity of dietary fibers by extrusion processing. M. LIU, C.F. Klopfenstein, and J.L. Brent. Department of Grain Science and Industry, Kansas State University, Manhattan, KS 66506

The statutory phrase "printed publication" has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was "published.“ -- p. 406

• Billboard hypothetical: p. 406

• “’public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication,’” In re Hall–NOT just indexing

• “The reference was shown with no stated expectation that the information would not be copied or reproduced by those viewing it.”

The factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.

Where professional and behavioral norms entitle a party to a reasonable expectation that the information displayed will not be copied, we are more reluctant to find something a "printed publication." This reluctance helps preserve the incentive for inventors to participate in academic presentations or discussions. Where parties have taken steps to prevent the public from copying temporarily posted information, the opportunity for others to appropriate that information … is reduced. -- p. 409

Novelty § 102

A person is not entitled to a patentif the invention was:

• in the prior art (as defined by § 102 (a), (e), (g))

• barred under § 102 (b), (c), (d)

Oliver Wendell Holmes, Jr.

1841-1932

2 Patents in Alexander Milburn

Whitford3.4.1911

FiledIssued: 6.4.1912

Clifford

Filed: 1.31.1911

Issued: 2.6.1912

Specification,

Pat. ‘001

Rotating handle at end of bar

Cutting element attached to bar

Base, with passageway

U-shaped bar

Claim Elements

102(e): Compare DISCLOSURE in spec of Patent A vs. CLAIM in Spec of Patent B

Claims, Pat. ‘002

Why would anyone disclose but not claim an invention?

Why would anyone disclose but not claim an invention?

• Related field

• Interested only in one application

• Oversight

Disclosed: Broad disclosure

Claimed: narrower embodiments

First application: ‘001 Patent

X

002 Patent, Second application

X

CLAIMS what was disclosed, but NOT claimed, in earlier application

Whitford: Claimed

3.4.1911 Filed

Issued: 6.4.1912

Clifford: Disclosed but not

claimed

Filed: 1.31.1911

Issued: 2.6.1912

“The delays of the patent office ought not to cut down the effect of what has been done.” – p. 423

Holmes’ reasoning

• Note emphasis on who was “prior inventor”

• Is there a sense that allowing the claims to Clifford would somehow deprive Whitford of credit? Or somehow harm the public?

What if they HAD claimed the same invention?

Alexander Milburn

Codified in §102(e): No patent if –

(e) Invention was DESCRIBED [but NOT claimed] in . . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention

• “Clifford had done all he could do to make” description public

• “Mailbox rule” for disclosure purposes? – as with Acceptances in Contract law?

Codified in Section 102(e):

No patent if – (e) Invention was DESCRIBED [but NOT

claimed] in . . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention

102(e) Issues• Patent must be granted; then application is

prior art as of FILING DATE: Nunc pro tunc

– Provisional rejections

• Application must be “by another” – technical definition, inventive entities

• Amendments: “filed in the US” -- international priority filings; published US applications; provisional applications

“Nunc pro tunc”

• “Now for then”

• When patent 1 ISSUES, the application for patent 1 becomes prior art against patent 2 AS OF THE FILING DATE OF PATENT 1 . . . .

• If patent 1 never issues, earlier filed application never becomes prior art

This would be a priority case . . .

• If Whitford and Clifford had CLAIMED the same subject matter

• Under 1952 Act: Covered under § 102(g) INTERFERENCE

New “102(e)”• 102(a)(2): Inventor gets patent UNLESS –

‘‘(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

End of another “home court” favoring rule

• New AIA § 102(d)(1) and (2) now provide that the earliest of a US domestic OR foreign filed counterpart is effective prior art against a later application that claims the same subject matter

• Goodbye, In re Hilmer

Agenda

• Section 102(e)

– Old and new

• Section 102(f)

Novelty § 102

A person is not entitled to a patentif the invention was:

• in the prior art (as defined by § 102 (a), (e), (g))

• barred under § 102 (b), (c), (d)

• derived from another under § 102 (f)

102(f): “The (f) is for Fraud”

35 USC § 102(f)

“A person shall be entitled to a patent unless –

* * *

(f) He did not himself invent the subject matter sought to be patented

“Campbell” Invention

Flexible Feed Track

Zimmerman’s belt buckle

Two Main 102(f) Scenarios

• “Derivation” (invention theft) a la Campbell– Requirements: (1) Conception by Person A; (2)

communication (enabling) to person B

• Inventorship rejections and disputes – PTO and litigation

• Related to 35 USC § 256– Misjoinder (adding non-inventor to patent)– Non-joinder (omitting inventor from patent)

New Derivation Provision

• AIA § 135• “135. Derivation proceedings• (a) Institution of Proceeding. An applicant for

patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application . . . .”

New § 135 (cont’d)

Any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made under oath, and shall be supported by substantial evidence . . . .

New Derivation Provision: Alternative Action

§ 291. Derived Patents(a) IN GENERAL.—The owner of a patent may

have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.