Patent Law and Policy

1. Patent Law and Policy University of Oregon Law School Fall 2009 Elizabeth Tedesco Milesnick Patent Law and Policy, Fall 2009 Class 8, Slide 1

2. § 102(b) Statutory Bar • Policy rationales: • Increased reliability of public information— to keep people from investing in concepts soon to be patented. • Faster dissemination of new information that may further research and improvements. • Early termination of patent monopoly so information will enter public domain sooner. § 102(b) § 102(a) No patent if, more than one year prior to application, [1] the invention was [A] patented or [B] described in a printed publication [C] anywhere, or [2] the invention was [A] in public use or [B] on sale [C] in this country No patent if, before the date of invention, [2] the invention was [A] patented or [B] described in a printed publication [C] anywhere, or [1] the invention was [A] known or [B] used [C] by others [D] in this country Patent Law and Policy, Fall 2009 Class 8, Slide 2

3. § 102(b) Statutory Bar Public Use • Egbert v. Lippman (1881) • Use of corset springs, under clothes, by inventor’s future wife was sufficient. • “If an inventor, having made the device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though… confined to one person.” • Inventions that, by their nature, can only be used where they cannot be observed by the public can still be in public use. • Moleculon Research Corp. v. CBS, Inc. (1986) • Showing model of puzzle to friends, and even letting them use the model in his presence, was not sufficient for public use. • Not public use where, based on the personal relationships and surrounding circumstances, inventor at all times retained control over the invention’s use and the distribution of information concerning it. • Beachcombers, Int’l., Inc. v. WildeWood Creative Prods. (1994) • Public use where inventor showed invention to party of 20-30 people without condition of secrecy, even though people were close friends. Patent Law and Policy, Fall 2009 Class 8, Slide 3

4. § 102(b) Statutory Bar Public Use and Trade Secret • Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (1946) • “[I]t is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly. • BUT “An inventor may continue for more than a year to practice his invention of his private purposes and enjoyment and later patent it… for he is not making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly.” • § 102(c) Abandonment • As in Macbeth-Evans Glass Co. v. General Electric Co., has been exclusively applied where inventor has been selling a product for many years but keeping the invention itself as a trade secret. • In modern practice, rule has been swallowed by § 102(b) because use goes on for more than one year. • Bates v. Coe (1878) states “inventors may keep their inventions secret;… they do not forfeit their right to apply for a patent, unless another in the meantime has made the inventions, and secured by patent the exclusive right to… the patented improvement.” Probably not abandoned if there is no publication, public use, or sale. Patent Law and Policy, Fall 2009 Class 8, Slide 4

5. § 102(b) Statutory Bar On Sale • Pfaff v. Wells Electronics (1998) • Invention could go straight from drawings to being manufactured, with no prototype in between. In the meantime, made a sale of not-yet-created product. Can an invention be “on sale” per § 102(b) but not reduced to practice? • “On-sale bar” applies if two conditions are met: (1) The product must be the subject of a commercial offer. (2) The invention must be “ready for patenting,” either by… (a) Proof of reduction to practice, or (b) Drawings or other descriptions sufficiently specific to enable one of skill in the art to practice the invention. • Abbott Laboratories v. Geneva Pharmaceuticals, Inc. • Compound had been sold by foreign companies into the U.S., but neither seller nor purchaser knew it was a specific form of terazosin hydrochloride. • Clearly meets the Pfaff test because reduced to practice (although “ready for patenting”?) and should not be removed from the public domain. Patent Law and Policy, Fall 2009 Class 8, Slide 5

6. § 102(b) Statutory Bar Experimental Use Exception • City of Elizabeth v. American Nicholson Pavement Co. (1877) • Experimental use was not prior public use under §102(b) where installation was at inventor’s own expense, was correct use to test durability and decay, even though public, examined the condition of the road almost daily, and told people it was an experiment and sought feedback. • Lough v. Brunswick Corp. (1996) • Boat repairman invented new seal assembly and gave out six prototypes, but was it experimental use or prior use? • Whether a use if “experimental” depends on the totality of the circumstances such as the number of prototypes and the duration of testing, whether records or progress reports were made concerning the testing, the existence of secrecy agreements, whether the patentee received compensation for use of the invention, and the extent of control the inventor maintained over testing. If no control over alleged experiments, no testing. If no reports re results, no testing. • Market testing is commercializing the invention and not experimental use. Patent Law and Policy, Fall 2009 Class 8, Slide 6

7. § 102(b) Statutory Bar Third Party Statutory Bar Activity • Baxter International v. COBE Laboratories, Inc. (1996) • Third party use of invention inside laboratory was prior art public use. • Seems harsh, but Baxter cannot disadvantage an inventor who files within one year of invention (assuming inventor was, in fact, the first to invent), but does take matter of timing vis-à-vis publication, public use, or sale out of inventor’s control. • Use of invention by thief is still prior art public use by third party. • W.L. Gore & Assoc., Inc. v. Garlock, Inc.. (1983) • Where third party use was subject to secrecy agreement and employees were informed of secrecy, not “public” use under § 102(b). • Secret use or sale of products can only be § 102(b) bar if it is the inventor’s own use. Patent Law and Policy, Fall 2009 Class 8, Slide 7

8. § 102(d) Statutory Bar • Before the filing date for your U.S. patent application, • a foreign patent issued • on a foreign patent application filed more then a year before your filing date for the U.S. patent application. • Very rare. Under § 114, per Paris Convention, you will always try to file within one year of your foreign filing date, to get the benefit of that priority date. Also, very unlikely that foreign patent would issue quickly enough to precede U.S. filing. A person shall be entitled to a patent unless – (d) [1] the invention was [2] 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 application for a patent in this country [3] on an application for a patent or inventor’s certificate filed more than twelve month before the filing of the application in the United States… Patent Law and Policy, Fall 2009 Class 8, Slide 8

9. § 102(a) and (b) Chart 102Was Invention:By:In:Before:If yes: a known others U.S. date of invention N a used others U.S. date of invention O a patented others any country date of invention P a published others any country date of invention A b patented anybody any country 1 year prior to filing T b published anybody any country 1 year prior to filing E b in public use anybody* U.S. 1 year prior to filing N b on sale anybody* U.S. 1 year prior to filing T * Exception: Under Metallizing Engineering, W.L. Gore and associated cases, secret uses and sales by one inventor create a bar but only for that inventor. Patent Law and Policy, Fall 2009 Class 8, Slide 9