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The Novelty Requirement II

The Novelty Requirement II. Class Notes: February 4, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner. Today’s Agenda. Derivation {35 U.S.C. § 102(f)} Priority & Secret Prior Art {35 U.S.C. § 102(g)}. Derivation. 35 U.S.C. § 102(f)

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The Novelty Requirement II

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  1. The Novelty Requirement II Class Notes: February 4, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

  2. Today’s Agenda • Derivation {35 U.S.C. § 102(f)} • Priority & Secret Prior Art {35 U.S.C. § 102(g)} Law 677 | Spring 2003

  3. 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. Law 677 | Spring 2003

  4. 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? Law 677 | Spring 2003

  5. 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? Law 677 | Spring 2003

  6. 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 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 concealedit. 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. Law 677 | Spring 2003

  7. 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? Law 677 | Spring 2003

  8. 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. Law 677 | Spring 2003

  9. Priority Law 677 | Spring 2003

  10. Priority Law 677 | Spring 2003

  11. 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? Law 677 | Spring 2003

  12. Priority: Issues • Burroughs Wellcome v Barr Labs. (Fed. Cir. 1994) (Mayer) • What is the real issue here? (Why?) • What was Broder’s and Mitsuya’s contribution to AZT? • Why is this insufficient for joint invention? • When will conception and reduction to practice coincide? (Why?) Law 677 | Spring 2003

  13. 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)? Law 677 | Spring 2003

  14. 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. Law 677 | Spring 2003

  15. 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). Law 677 | Spring 2003

  16. Next Class • Obviousness • The Graham Framework Law 677 | Spring 2003

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