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CLASS NINE: July 1, 2013

I. NOVELTY:a. 102: A person shall be entitled to a patent unless-

i. (a) the invention was known or used by others in this country, orpatented or described in a printed publication in this or a foreigncountry, before the invention thereof by the applicant for thepatent,

ii. (b) the invention was patented or described in a printed publicationin this or a foreign country or in public use or on sale in thiscountry, more than one year prior to the date of the application for

patent in the United States

II. PRIORITY: 102(g)a. (g)(1) during the course of an interference conducted under section 135 or

section 291 (inter partes proceeding), another inventor involved therein

establishes, to the extent permitted by section 104, that before such

persons invention thereof of the invention was made by such otherinventor and not abandoned, suppressed or concealed, or

b. (ex parte prosecution/invalidity defense) (2) before such persons inventionthereof, the invention was made in this country by another inventor who had notabandoned, suppressed, or concealed it. In determining priority of invention

under this subsection, there shall be considered not only the respective dates ofconception and reduction to practice of the invention, but also the reasonablediligence of one who was first to conceive and last to reduce to practice, from a

time prior to conception by the other.c. In determining priority under this subsector there shall be consideredd. CONCEPTION:

i. The formation in the mind of the inventor of definite idea of acomplete and operative invention as it is thereafter reduced topractice

1. A person of ordinary skill in the art could reduce to practicewithout under experimentation

a. Reducing to practice:i. Actual: Building a model, making a drawing

b. Constructiveii. Griffith v. Kanamaru: Conception of a way to cure diabetes but

doesnt reduce it to practice until 19841. If Griffith unquestionably conceived first, why isnt that the

end of the story?

a. Reasonable diligence must be before a second filerfilesb. Reasonable diligence:

i. Valid excuses as to why you could not fileon time:

1. Need to develop a closely relatedinvention to test the primary

invention

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2. Serious illness3. Laboratory Burns down

ii. Invalid excuses:1. Extended vacation/hiatus from a

particular problem

2.

Insufficient money3. Company relocatesIII. PRIORITY RULE 102(g)

a. First inventor to conceive has priority as long as she is reasonably diligentin reducing her invention to practice and did not abandon, suppress orconceal her invention

i. Alternativelyb. The first inventor to reduce to practice has priority unless another inventor

can prove prior conception and reasonable diligence in reducing topractice from before the others conception

IV. STATUTORY BARS 102(b)a.

102: 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

i. Grace Period from a year after filing1. Before that grace period, no patent

c. On-sale bar:i. Critical date One year prior to the filing of the application

(anything before the critical date will validate the patent) anything

after wont

ii. Pfaff v. Wells Electronics, Inc.: An invention is barred under102(b), if more than one year prior to the date of the application:

1. The invention is the subject of a commercial offer for sale,and

2. The invention is ready for patentinga. Ready for patenting: When it has been reduced to

practice or described sufficiently to enable a

persons skilled in the art to practice (aka, actually orconstructively reduced to practice)

3. Why doesPfaffnot get a patent?iii. Space Sys. Loral v. Lockhead:

1. Facts: Inventor testified at full trial that back when he toldhis boss that he had an idea to position satellites better, but

wasnt quite sure how it was going to work

2. Boss went to partner for financial help3. A bare unenabled conception is not enough to show that the

invention is ready for patenting

4. How do we make sure that future patentees dont side stepthis requirement re: grace period by refusing to put theirideas on paper?

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d.

Public Use Under 102(b)Informing Use Non-Informing Use Secret Use (public use orsale of product madefrom secret process)

Inventor X XEgbert v. Lippman XMetalizing Engg Co.

v. Kenyon Bearing

Third Party X ? NO W.L. Gore v.Garlock

e. In order to trigger an on-sale bar, you must sell (or offer for sale) theactual product or the drawings to the product

f. Eggbret v. Litman:i. Facts:

1. The original patentee created springs for his soon to be wife2. Public did not get the benefit of this invention

ii. Analysis:1. In order to constitute public use: it is not necessary that

more than one article be used, or that it be used by the

public

2. Instead the test is:a. Whether the inventor having made the device, gives

or sells it to another without limitation or restriction

or injunction of secrecy (gives it away or sells it,

etc.) without any limitation of its usei. Thats true even if the device is not visible

by the general public

b. Reason why we have the public use bar:i. If it was viewed by the public: Court

constitutes this as evidence that the patentee

is not the inventor

c. Justice Miller assumes that the woman is incapableof making a copy

d. When you put products out there to the publicwithout any limitations or restrictions

e. Would this case turn out any differently if theparties were married?

i. Whats public?f. Secret use by the inventor is a bar

V. SUMMARY OF ABOVE:a. Under the old section of 102 (pre AIA), the first inventor can get a patent

even if hes the second to file, if inventor shows diligence in reducing topractice between his 1

stconception and ultimate reduction to practice

b. Due diligence:i. Mere economic reasons for delay are not sufficient

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ii. On the other hand, attempting to test the invention to make sure itwork IS SUFFICIENT REASON FOR DELAY

1. Clarification: all that we ask for is that invention work2. We are not going to give you time to make the invention

perfect or even ready for the market, you get enough time

for your conception to make sure the product worksa. Can file a patent, then a patent for improvementiii. AIA abolished old system and now its first to file 102(a)iv. 102(b), 102(a) whereas applies to others

1. 102(b) bars:2. Apply to inventors who dont make timely filing3. Preventing a de facto patent extension4. In order for challenger to invoke 102(b) bar:

a. Must be an inventioni. Actual (model or drawing); or

ii. Constructive reduction to process5.

Offerings for sale, where allowing public use, preventsapplication

a. Offer for sale:i. Offer to sell the actual invention

v. 102(b) reasons:1. Protect public by not allowing withdraw of use of public

use

2. Prevent inventors from gaming the system of de factoinventions

a. This dual purpose as a result, it doesnt matter whohas done the prohibited activity

b. Public has come to rely on itVI. EXPERIMENTAL USE: Doctrine re: patents benefit to the public

a. An inventor before filing application for invention can use itexperimentally, but if experimentation is over a year, need to file forexperimental use

b. City of Elizabeth v. American Nicholson Pavement Co.i. Experiment had to last more than 1 year limit (5 years)

ii. Once saw that it worked, he patented itiii. City of Elizabeths argument says that invention was in use for

over a year since people were using it daily

iv. Court says no, this was a typical experimentv. Factors are:

1. The cement was laid over 75 years, monitored it for severalyears, made a good faith effort to reduce invention to

practice2. Invention cannot feasibly be tested in private (must be used

in public to make sure it works)

3. Due diligence4. Under control of inventor

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c. Lough v. Brunswick Corp.:i. Plaintiff invented seal assembly for leaking boats

ii. Seal prevented leaking and corrosioniii. Plaintiff built a small portion (6)

d. Re: Factors effecting Experimental Use:i.

Number of prototypes and duration of the testingii. Whether records or progress reports were made during testingiii. The existence of a secrecy agreement between the patentee and the

party performing the testing

iv. Whether the patentee received compensation for the usev. Extent of control the inventor maintained over the testing*** this

is the key factor

e. Inventor failed to satisfy most of these factorsi. Didnt set any goals

ii. Kept no reports of these experimental testingf. **Experimental use Argument:

i.

Used to defeat public use bar**1. Cannot be used to defeat the On-Sale bar2. Not a rejoinder to an on-sale bar

a. Once youve decided to sell, you have started your1 year clock ticking

g. Testing the invention vs. testing market:i. Once invention is reduced to practice, experimental use ends

1. Although the experiment may end, cannot delay beyond thepoint which we allow you to collect the necessary data

h. In Re Klopfenstein:i. What is necessary for a reference to be considered a publication

ii. Facts:1. Patent application filed in 20002. For patentees in 1998, P and colleagues made a slide

presentation to describe their invention3. No prohibition on note taking during conference4. PTO says theyre outside 1 year grace period since their

invention was described in a publication and barreda. Argument: PowerPoint presentation is not transitory

and should not be barred

iii. Issue: what counts as printed publicationiv. Analysis

1. Whether it was has been disseminated, distributed to thepublic, or sufficiently available to the public interested in

art: **can a member of the public interested in this general

sufficiently accessible to go out in the public and find it?a. I.E. a thesis published and catalogued by last name

does not qualify because it is not arranged by its

topicb. A person of ordinary skill in the art (POSITA)

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c. A presumption of a POSITA, knowing about, andhas read every single publication on that topic, no

matter where it is indexed, has read it.i. If it were organized by last name, the

POSITA would not know its subject matter

and therefore thisparallels Plaintiffsargument re: powerpointd. On the other hand, paper indexed by topic, in a

single foreign language and library does qualify as

a printed publication, a POSITA would be able tofind it

e. Even a paper delivered orally would count if copiesof the paper were distributed to the attendees at a

conferencef. But absent copies dont count because it has to be of

printed publication

g.

Purpose of this rule is about protecting thepublich. Length of time display was exhibitedi. More transient the display exhibitedj. Expertise of the target audience (how easy to retain

the information) more expert, less explanations

needed

k. Easement of the material that would be copiedl. Suppose this presentation was made to a class of

undergraduate studentsi. Students expertise do not equate to the

POSITA regarded by the Courts analysism. Public Accessibility**: the key to figuring out

whether it is publicly accessible. But it is

hypotheticali. Indexed?

ii. In what sense must it be printed?1. Powerpoint2. One Copy distributed to conference

organizers plus oral presentation3. Oral Presentation recorded and MP3

file available on a website?i. Bruckelmeyer case: Drawings not made public, but had they been made

public did not disclose

i. Majority says:1. POSITA, would have seen the summary, called the PTO,

and discovered drawings and applications

2. Nothing in the patent suggested that these drawings wereout there

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j. In early 1990s whether material printed online of the FDP Server countsas printed publication

i. SRI National: FDP Server: (predecessor to www.)ii. Court says this is a Jury question:

1. Fact intensive question for POSITA to go out and look forit2. This question has become somewhat mooted

VII. SUMMARY:a. AIA Update:

i. Gone in effect March 16, 2013ii. First To File Or Disclose:

1. First to file wins, except where:a. Second filer was first to publicly disclose the

invention (most important exception);b. The first filer obtained the invention, directly or

indirectly, from the second filer (to be determined

in derivation proceedings: --the heir to oldinterferences); or

c. The first filer abandons the application prior topublication or issuance.

b. New102(a) NOVELTY; Prior Art: a person shall be entitled to a patentunless:

i. (1)ii. (2)

c. New 102(b) EXCEPTIONS:i. (1)

d. First to File: Exceptions/Grace PeriodPrior Art in 102(a) 102(a)(1) Printedpublications, public uses,

etc.

102(a)(2) 1

s

filed US patentapplication by another

Exceptions in 102(b)(limited to 1 year only!)

102(b)(1)(A) Any disclosure:

coming from the applicant

directly or indirectlyB disclosures by others

made after public disclosure

by the applicant