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Chapter 6: Novely Under Pre-Aia Law A. Introduction

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Chapter 6: Novely Under Pre-Aia Law A. Introduction CHAPTER 6: NOVELY UNDER PRE-AIA LAW A. INTRODUCTION TO THE PRE-AIA VERSION OF § 102 .................................................... 1 B. § 102(b): THE GENERAL STATUTORY BARS ...................................................................... 3 C. §§ 102(c) & (d): RARE STATUTORY BARS ........................................................................... 6 1. Section 102(c): Abandonment ................................................................................................ 6 2. § 102(d): Late U.S. Application After Foreign Patenting ....................................................... 7 D. NOVELTY (REFERENCES TESTED BY INVENTION DATE) .......................................... 10 1. § 102(a): Publicly Available Prior Art .................................................................................. 11 2. § 102(e): Disclosures in U.S. Patent Applications ................................................................ 17 3. § 102(g)(1): Inventions Claimed in U.S. Applications ......................................................... 21 4. § 102(g)(2): Inventions Made In the United States ............................................................... 21 E. DATES OF INVENTION AND PRIORITY ............................................................................ 21 1. § 102(g)(1): Determining Priority in Interferences ............................................................... 24 a. Conception, Diligence and Reduction to Practice ............................................................ 25 b. “Abandoned, Suppressed or Concealed” Inventions ....................................................... 41 2. § 102(g)(2) and Priority of Invention Outside Interferences ................................................ 52 3. Calculation of Invention Dates Outside of Interferences ...................................................... 65 F. § 102(f): DERIVATION FROM ANOTHER ........................................................................... 71 Chapter 6 NOVELTY UNDER PRE-AIA LAW The forms of action we have buried, but they still rule us from their graves. —Frederic William Maitland1 A. INTRODUCTION TO THE PRE-AIA VERSION OF § 102 The most fundamental difference between the AIA and pre-AIA law is, of course, the abandonment of the older “first-to-invent” approach to determining novelty and priority. Thus, one of this Chapter’s most important tasks is to cover the complex rules by which the older system determined a date of invention. Beneath that one important difference between the two systems, there are many similarities, and as you will see, the vast bulk of references that qualify as prior art under the AIA would also qualify under pre-AIA law. Because those similarities are so practically important, this Chapter will begin with them. If you have developed a reasonable understanding of the AIA’s system for determining novelty, you will not have too much difficulty learning the pre-AIA system provided that you begin your study by learning one point—and learning it well: The so-called “statutory bar” provisions in the pre-AIA § 102(b) closely parallel the basic prior art-defining categories in AIA § 102(a)(1). The categories of references in pre-AIA § 102(b)—“patented,” “described in a printed publication,” “in public use” or “on sale”—are pretty much the same as those in AIA § 102(a)(1). Moreover, the pre-AIA statutory bar provisions can be applied without knowing any dates of invention. Like the novelty provisions in AIA § 102(a)(1), the “critical date” for applying the statutory bars is based on the filing date of the application being tested for novelty. A difference is that the statutory bar critical date is one year before the application filing date, but simple subtraction of a year makes that difference easy. Because of the obvious legal parallels between the AIA system of prior art and the pre- AIA statutory bars, this Chapter will begin with the statutory bars in subchapter B, infra. First, however, we will give an overview of the structure of the pre-AIA § 102. Pre-AIA § 102 contains three different kinds of provisions covering three issues that are considered distinct under the “first-to-invent” philosophy of the older system. True “novelty” provisions define what is considered true “prior” art—i.e., references qualifying as art prior to the applicant’s date of invention. Thus, all the novelty-defining subsections of the pre-AIA § 102 require calculation of the applicant’s date of invention. The other issues addressed in the pre-AIA § 102 are the so-called statutory bars to patenting and the prohibition on derivation, which operate without regard to invention dates. Reproduced below is the statutory text marked to 1 F.W. MAITLAND, THE FORMS OF ACTION AT COMMON LAW 2 (1909). indicate the issue addressed by each subsection (N, D, and SB for, respectively, Novelty, Derivation and Statutory Bar): Pre-AIA § 102. CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO PATENT A person shall be entitled to a patent unless— N (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 SB (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 SB (c) he has abandoned the invention, or SB (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 N (e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or D (f) he did not himself invent the subject matter sought to be patented, or N (g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s 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. New Chapter 6 – 2 Subsection (f) is easily recognized as the prohibition on derivation — i.e., the requirement that the applicant have actually invented the subject matter of the patent, not derived it or stolen it from someone else. As mention in the prior chapter, AIA § 102 lacks any provision quite like it. As shown by the statutory text, the novelty provisions of the statute (a, e & g) are directed only to events that occur before the applicant’s time of invention. See pre-AIA § 102 (a) (“before the invention thereof by the applicant”), (e) (same language), and (g) (“before such person’s [the applicant’s] invention thereof”). In contrast, the statutory bar provisions operate without regard to a date of invention. Under the first-to-invent philosophy, if an invention passes the novelty requirements in subsections (a), (e) and (g), then the law considers the invention to be new and the inventor may obtain a patent on it (provided, of course, that the invention meets other requirements such as utility and nonobviousness). The inventor’s right to a patent will, however, be lost if subsequent events trigger one of the statutory bars found in subsections (b), (c) & (d). Thus, the statutory bars are described in the statutory title to old § 102 as “loss of right to patent.” As we will see below, however, the actual operation of the main statutory bar provision in § 102(b) is highly similar to the operation of the AIA prior art system. B. § 102(b): THE GENERAL STATUTORY BARS We begin our study of the pre-AIA version of § 102 by studying § 102(b), which closely parallels categories of prior art in the AIA system. A schematic of the language in § 102(b) helps to show the parallels: Schematic Representation of § 102(b) § 102: A person shall be entitled to a patent unless— … (b) the invention was [i] patented [in this or a foreign country] or [ii] described in a printed publication in this or a foreign country or [iii] in public use [in this country] or [iv] on sale in this country, more than one year prior to the date of the application for patent in the United States[.] As this schematic
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