Novelty and Statutory Bars

1. Novelty and Statutory Bars Intro to IP Prof Merges – 1.23.12

2. Two novelty regimes to understand • Existing system, based on first to invent or invention date; in effect for all patent applications filed before March 13, 2013 • New, post-America Invents Act (AIA) enactment, first to file system: all applications filed on or after March 13, 2013

3. Overview • Leahy-Smith America Invents Act (AIA) became law on Friday, Sept. 16. • Culminates six years of legislative activity • Specific effective dates will be measured from Sept. 16, 2011.

4. AIA: Major Substantive Changes • Very important shifts in U.S. patent law • First-to-file • Affects (1) novelty and (2) priority • This moves US law toward international harmonization – but with many nuances and twists!

5. Novelty § 102 A person isnotentitled to a patent if the invention was: • in theprior art(as defined by § 102 (a), (e), (g)) • barredunder § 102 (b), (c), (d)

6. CLAIM 1: ELEMENTS Rotating handle at end of bar U-shaped bar Cutting element attached to bar Base, with passageway

7. Sample Publication Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________ ______________various round, and____ . ______________ _______ Exciting : stainless steel blades, , ___________ ________ ____________________ . The wire slides into a convenient For tightened wire designs, cutting bar shapes: U-shaped, new cutting elements tightened wire passageway in the base. attached to the bar tightening can be achieved by rotating the handle.

8. Cheese Industry Today New Trends in Slicers by J. Smith NO PATENT GRANTED ________________ New innovations _______________________________ ______________various round, and____ . ______________ _______ Exciting : stainless steel blades, , ___________ ________ ____________________ . The wire slides into a convenient For tightened wire designs, NOVELTY REQUIREMENT NOT MET: cutting bar shapes: U-shaped, new cutting elements tightened wire attached to the bar passageway in the base. tightening can be achieved by rotating the handle. Claim Elements Claim Elements in Publication Rotating handle at end of bar Rotating handle at end of bar Cutting element attached to bar Cutting element attached to bar Base, with passageway Base, with passageway U-shaped bar U-shaped bar

9. Sample Publication: Revised Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________ ______________various round, and____ . ______________ _______ Exciting : stainless steel blades, , ___________ ________ ____________________ . The wire slides into a convenient cutting bar shapes: U-shaped, new cutting elements tightened wire passageway in the base. attached to the bar

10. Invention Compared with Prior Art Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Smith Article X X X Jones Patent X X Adams Slicer X X INVENTIONNOT ANTICIPATED NOVELTY REQT MET: PATENT GRANTED

11. Novelty (Anticipation) [§ 102(a)] Versus Statutory Bars [§ 102(b)] • Novelty/Anticipation concerned with NEWNESS – is it original to the patent applicant/patentee? • Statutory Bars concerned with TIMELINESS – did the inventor file soon enough?

12. Critical Concept: the “Critical Date” The Invention Date

13. Critical Concept: the “Critical Date” The Invention Date The Prior Art

14. Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART The Invention Date The Prior Art

15. Novelty Critical Date Example Reduction to practice: 7/12/1886 Filed: 6/7/1889 Conception: Summer 1886 Unpacking the “invention date”

16. Rosaire v. Baroid

17. Palestine, Texas

19. Horvitz publications Horvitz, L., 1939. On Geochemical Prospecting. Geophysics, V. 4, No. 3, pp. 210-228. Horvitz, L., 1945. Recent Developments in Geochemical Prospecting for Petroleum. Geophysics, V. 10, pp. 487-493. Horvitz, L., 1950. Chemical Methods. In: J.J. Jakosky (Editor), Exploration Geophysics (2d ed.). Trija Publishing, Los Angeles, pp. 938-965. Horvitz, L., 1969. Hydrocarbon Geochemical Prospecting After Thirty YearsHorvitz, L., 1972. Vegetation and Geochemical Prospecting for Petroleum. AAPG Bull., V. 56, pp. 925-940. Horvitz, L., 1985. Near-surface Hydrocarbons and Non-hydrocarbon Gases in Petroleum Exploration. Presented at: Asso. Petrol. Geochem. Explor. AAPG Rocky Mountain Section, Denver, Colo., June, 1985.

20. Rosaire v Baroid Section 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.

21. The invention was known or used by others in this country - Note the national limitation here • What does it mean to be “known or used”? • Why was Teplitz team’s use not enough by itself to anticipate?

22. Rosaire (cont’d) • Rosaire’s argument – • Gulf research was not “public,” so cannot be part of the prior art against the patentee • Court’s response --

23. Rosaire v. Baroid With respect to the argument advanced by appellant that the lack of publication of Teplitz's work deprived an alleged infringer of the defense of prior use, we find no case which constrains us to hold that where such work was done openly and in the ordinary course of the activities of the employer, a large producing company in the oil industry, the statute is to be so modified by construction as to require some affirmative act to bring the work to the attention of the public at large.

24. In re Hall • Section 102(b) case • But: same standard for “publication” under 102(a) and 102(b) • See Rosaire case • Reissue patent application • “Protest” during reissue • Discontinued in 1980s; but similar procedure is part of AIA changes

25. Foldi Thesis -- Freiburg

26. Freiburg

27. Evidence of “publicness” • Index cataloguing • Open to public

28. Novelty vs. statutory bars • Novelty: who was first? (Measured from date of invention) • Statutory bar: did you file on time? (Measured from date of filing)

29. § 102. Novelty and loss of right to patent 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 (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 . . . .

30. § 102. Novelty and loss of right to patent A 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 . . . .

31. Statutory bars v. novelty • 102(a) – Novelty; 102(b) – Statutory bars • Different as to (1) who may create prior art; (2) the categories of prior art; and (3) the critical date for determining prior art

32. Crucial Concept: the “Critical Date” The Invention Date

33. Critical Concept: the “Critical Date” The Invention Date The Prior Art

34. Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART The Invention Date The Prior Art

35. Jones Patent Application Jones Jones Dec. 19, 1996 Dec. 19, 1995 Oct. 1995 Dec. 20, 1996 One Day Gap Section 102(b) Bar Statutory Bar Dates One Year Grace Period

36. Statutory Bars § 102(b), (c), (d) An inventor loses the right to patent if, more than one year prior to the applicant’s filing, the invention was: • patented by another anywhere • patented by the applicant in a foreign country-- § d • described in a printed publication anywhere • in public use in the US • on sale in the US(strict identity not required)

37. Egbert v. Lippmann • Statutory bars v. novelty • 102(a) – Novelty; 102(b) – Statutory bars • Different as to (1) who may create prior art; (2) the categories of prior art; and (3) the critical date for determining prior art

38. Egbert v. Lippmann • Why not a novelty case? • What are the essential facts: use a timeline

39. Corset Springs

40. Egbert (cont’d) • Conception, Jan – May 1855 • Reduction to Practice: May, 1855 (?) • 1858: Second pair of springs • Patent app filed: March 1866

41. Egbert • Only 1 used – enough? • “Non-informing public use” • Why enough to constitute a bar?

42. Conclusion • “The inventor slept on his rights for 11 years . . .” –

43. Samuel F. Miller, on Court 1860-1890

44. Miller Dissent ‘‘It may well be imagined that a prohibition to the party so permitted [to use the springs] against her use of the steel spring to public observation, would have been supposed to be a piece of irony.’’ 104 U.S. (14 Otto), at 339.

45. The new (post-AIA) regime • Invention date is no longer the “critical date” • Everything is based on the filing date of a patent application

46. First-to-File System • The first-to-file system’s basic rule and exceptions flow from two familiar legal doctrines that the statute defines in new ways: • The definition of prior art in new 102(a): Now defined to be based mainly on time of filing + now also without any geographic restrictions. • The defined exceptions or grace period in New AIA § 3, amending 35 USC § 102(b).

47. First-to-File System: 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).