novelty and statutory bars intro to ip prof merges – 1.22.09
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Novelty and Statutory Bars
Intro to IP
Prof Merges – 1.22.09
Novelty § 102
A person is not entitled to a patentif the invention was:
• in the prior art (as defined by § 102 (a), (e), (g))
• barred under § 102 (b), (c), (d)
Base, with passageway
U-shaped bar
Cutting element attached to bar
Rotating handle at end of barCLAIM 1:ELEMENTS
Cheese Industry TodayNew Trends in Slicers
by J. Smith
Sample Publication
________________ 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
attached to the bar passageway in the base.
tightening can be achieved by rotating the handle.
Cheese Industry TodayNew 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
attached to the bar passageway in the base.
tightening can be achieved by rotating the handle.
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
NOVELTY REQUIREMENTNOT MET:NO PATENTGRANTED
Claim Elements Claim Elements in Publication
Cheese Industry TodayNew Trends in Slicers
by J. Smith
Sample Publication: Revised
________________ 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
attached to the bar passageway in the base.
Invention Compared with Prior Art
Rotating handle at end of bar
Cutting elementattached to bar
Base, withpassageway
U-shapedbar
SmithArticle
JonesPatent
AdamsSlicer
X X
X X
X X
INVENTIONNOT ANTICIPATEDNOVELTY REQT MET:
PATENT GRANTED
X
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?
Critical Concept: the “Critical Date”
The Invention Date
Critical Concept: the “Critical Date”
The Invention Date
The Prior Art
Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART
The Invention Date
The Prior Art
Conception: Summer 1886
Reduction to practice:
7/12/1886
Novelty Critical Date Example
Filed: 6/7/1889
Unpacking the “invention date”
Rosaire v. Baroid
Palestine, Texas
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.
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.
(a) 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?
Rosaire (cont’d)
• Rosaire’s argument – – Top of p. 404
• Court’s response --
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.
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
Foldi Thesis -- Freiburg
Freiburg
Evidence of “publicness”
• Index cataloguing
• Open to public
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)
§ 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 . . . .
§ 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 . . . .
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
Critical Concept: the “Critical Date”
The Invention Date
Critical Concept: the “Critical Date”
The Invention Date
The Prior Art
Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART
The Invention Date
The Prior Art
Statutory Bar Dates
One Year Grace Period
Dec. 20, 1996
PatentApplication
JonesJones
Oct. 1995 Dec. 19, 1995
Jones
Dec. 19, 1996
Section 102(b) BarOne Day Gap
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)
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
Egbert v. Lippmann
• Why not a novelty case?
• What are the essential facts: use a timeline
Corset Springs
Egbert (cont’d)
• Conception, Jan – May 1855
• R to P: May, 1855 (?)
• 1858: Second pair of springs
• Patent app filed: March 1866
Egbert
• Only 1 used – enough?
• “Non-informing public use”
–Why enough to constitute a bar?
Conclusion
• “The inventor slept on his rights for 11 years . . .” –
Samuel F. Miller, on Court 1860-1890
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.