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35 USC §102 Conditions for Patentability; Novelty and Loss of Right to Patent 2012 IP Summer Seminar

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35 USC §102 Conditions for Patentability; Novelty and Loss of Right to Patent 2012 IP Summer Seminar 35 USC §102 Conditions for Patentability; Novelty and Loss of Right to Patent 2012 IP Summer Seminar Steven M. Jensen Partner [email protected] July 2012 © 2011 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP Conditions for Patentability To be patentable… ♦ Invention must be new, useful, and non-obvious. ♦ Novelty: Not already described or patented elsewhere, or known, used or available to others in the United States (35 USC §102). ♦ Utility: Any beneficial use. Generally easy to satisfy (35 USC §101). ♦ Non-obviousness: Standard is one skilled in the relevant technology (35 USC §103). 1 1 What constitutes prior art? ♦ 35 USC §102 specifies seven events that will defeat novelty: subsections (a), (b), (c), (d), (e), (f), and (g). ♦ Subsections (a), (b), and (e) are most often applied by Examiners in the U.S. Patent & Trademark Office, and will be discussed in greater detail. ♦ Many of these §102 events will defeat novelty if they occur prior to the filing date or a priority date claimed in the patent application. 2 Establishing a priority date ♦ For a U.S. patent application filed under 35 USC §111(a), priority can be claimed to an earlier U.S. application or foreign application: ♦ If the application is a continuation, divisional, or continuation-in- part (CIP) of an earlier U.S. application, then domestic priority can be claimed under 35 USC §120 ♦ The first paragraph of the specification must be amended to include specific reference to the earlier U.S. application 3 2 Establishing a priority date ♦ To claim foreign priority under 35 USC §119, take the following steps: 1.Inform U.S. associate of earlier foreign application 2.Reference the earlier foreign application in the Declaration & Power of Attorney 3.File a certified copy of the foreign priority application, or if applicable, utilize Priority Document Exchange (PDX) program for retrieval of priority documents from European Patent Office (EPO), Japan Patent Office (JPO), or Korean Intellectual Property Office (KIPO) ♦ Example: ♦ U.S. application filed on June 1, 2011 under 35 USC §111(a) ♦ Priority claim under 35 USC §119 to Japanese application filed on June 1, 2010 ♦ Notify U.S. associate to make a priority claim, and list priority application on Declaration, so that the priority application will be automatically retrieved by the U.S. Patent and Trademark Office 4 35 USC §102(a) A person shall be entitled to a patent unless— (a) 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 … 5 3 35 USC §102(a) ♦ A person shall be entitled to a patent unless— (a) 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 … ♦ Section 102(a) refers to events that will defeat novelty if they occurred before the applicant invented the claimed invention, not merely before the filing date ♦ U.S. Examiners will treat the filing date or priority date of application as the invention date ♦ May swear behind filing date using Rule 131 affidavit, in order to establish an earlier invention date 6 35 USC §102(a) A person shall be entitled to a patent unless— (a) 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 … ♦ Section 102(a) applies only to the work of others, not the applicant’s own work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982) ♦ The term “others” refers to a different inventive entity – if at least one inventor is different, then a rejection can be made under 35 USC §102(a) ♦ If inventors are the same, then no rejection under 35 USC §102(a) ♦ Can establish “same inventors” by filing a Rule 132 affidavit 7 4 35 USC §102(a) A person shall be entitled to a patent unless— (a) 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 … ♦ The “known or used” requirement requires public knowledge or use, and pertains only to activities occurring in the United States ♦ Public knowledge or use involves work done openly without any deliberate attempt to conceal the work from the public 8 35 USC §102(a) A person shall be entitled to a patent unless— (a) 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 … ♦ Publication of the invention can result in anticipation, regardless of where it occurs ♦ What constitutes a publication? ♦ Discussed in greater detail under Section 102(b) 9 5 35 USC §102(b) ♦ A person shall be entitled to a patent unless— (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 … ♦ Section 102(b) is the “statutory bar” ♦ U.S. Examiners are instructed to first determine whether a reference qualifies as prior art under Section 102(b), as described in MPEP 706.02(a) ♦ If the publication date or issue date of a reference is more than one year before the earliest U.S. filing date, then the reference qualifies as prior art under 35 USC §102(b) 10 35 USC §102(b) A person shall be entitled to a patent unless— (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 … ♦ Applies to acts by the applicant and others ♦ Applicant’s own public use, sale, or publication can be prior art if it occurred more than one year before the effective U.S. filing date ♦ One-year grace period in the United States 11 6 35 USC §102(b) A person shall be entitled to a patent unless— (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 … ♦ What qualifies as a patent or printed publication? ♦ U.S., PCT, and foreign published applications and issued patents ♦ Books, periodicals, newspapers, catalogs, trade literature, conference papers ♦ Courts focus on public dissemination and accessibility 12 35 USC §102(b) ♦ A person shall be entitled to a patent unless— (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 … ♦ Other examples of printed publications ♦ Electronic publications (e.g., Internet, LEXIS, etc.) ♦ Dissertations submitted to university libraries ♦ Printed slides accompanying presentation ♦ Oral presentations, even with visual aids, are considered transitory, and thus not “printed publications” 13 7 35 USC §102(b) ♦ A person shall be entitled to a patent unless— (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 … ♦ “Public use” and “on sale” bars apply only to activities occurring in the United States ♦ “Public use” bar ♦ Only a single use may be sufficient ♦ To avoid bar, inventor must attempt to keep the invention secret – have persons witnessing or using invention sign confidentiality/nondisclosure agreements 14 35 USC §102(b) ♦ A person shall be entitled to a patent unless— (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 … ♦ “On sale” bar ♦ Arises when a definite sale or offer for sale occurred more than one year prior to the U.S. filing date ♦ Current law: Pfaff test, from Pfaff v. Wells Elecs., Inc., 124 F.3d 1429, aff’d 525 U.S. 55 (1998) 15 8 35 USC §102(b): On-sale bar ♦ Pfaff test ♦ The product must be subject of a commercial offer for sale; and ♦ The invention must be ready for patenting ♦ Proof of reduction to practice before critical date; or ♦ Proof that prior to the critical date, the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention ♦ “Ready for patenting” standard clarified in later Federal Circuit cases ♦ To be “ready for patenting” the inventor must be able to prepare a patent application with an enabling disclosure, as required under 35 USC §112 ♦ Space Systems/Loral, Inc. v. Lockheed Martin Corp., 271 F.3d 1076 (Fed. Cir. 2001) 16 35 USC §102(c) ♦ A person shall be entitled to a patent unless— (c) he has abandoned the invention, or… ♦ Abandonment requires a deliberate surrender of rights ♦ If applicant inadvertently does not respond within the 6-month statutory period, can file a petition to revive; 35 USC 102(c) is not invoked 17 9 35 USC §102(d) ♦ A person shall be entitled to a patent unless— (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or … 18 35 USC §102(d) ♦ Section 102(d) prevents an applicant from patenting an invention in the United States if the applicant received a patent in a foreign country before the U.S.
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