Statutory Bars, Priority, Intro to 103

Prof. Merges – Intro to IP

1.26.09

• M 1/26: egbert, city, kanamaru, graham•

Statutory Bars• Priority• Non-Obviousness•

196-206 ; Problem 3-8• 206-212• 212-224

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 patentA 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 patentA 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

5/1855

The “Critical Date” for the

Patent ApplicationBarnes Actually

Files PatentApplication

1856

Frances Lee Begins“Public Use”

3/18661855

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

4/8/81

The “Critical Date” for the

Patent Application

Texas Instruments places P.O. for 30,100 new chip carriers

Pfaff Files PatentApplication

7/81

Order Filled

Pfaff v. Wells

4/19/824/19/81

Exception to §102(b): Experimental Use

City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1877)

75 feet

Factors: • good faith effort to reduce invention to practice• invention cannot feasibly be tested in private• due diligence• under control of inventor

Limited to reducing invention to practice; not refinement.

Once RTP complete, exception ends.

American Nicholson Paving

Wood block pavements were laid in New York and Philadelphia about 1835, in England about 1838, and in Paris about 1880. The first blocks were round or hexagonal, and many different types of wooden pavements were patented between 1840 and 1913.

Wood Block technology

Wood block technology II

Nicholson timeline

8.1847: Nicholson files caveat

1854: Patent filed/Issues 1875:

Reissued Patent Expires

Hosking Patent: 1850

Nicholson Facts

8.1847: Nicholson files caveat

1854: Patent filed/Issues 1875:

Reissued Patent Expires

6 Years of Public Use

• 1821: Mill Dam runs from Beacon Street to Charles Street and across to Sewellís Point, Brookline. The dam is the brainchild of Uriah Cotting and the Roxbury Mill Corporation. The structure is 50 feet wide and one half mile long with a toll road running over it between a row of trees. It is called Western Avenue and later Beacon Street.

Old Mill Dam (Beacon Street)

Old Mill Dam (Beacon Street)

2004 & 2007 World Series Winner

Key Facts

• Lang Testimony– Nicholson inspected surface daily– Asked questions about it

• Corroboration by witnesses

Holding

• Public use okay “when the delay [in filing] is occasioned by a bona fide effort to bring his invention to perfection or to ascertain whether it will answer the purpose intended”

35 USC § 102(g)(1) and (2)

(g)(1) Inventor establishes [prior invention] and not abandoned, suppressed or concealed . . .”

(g)(2) Invention was made in this country by another inventor who had not abandoned, suppressed or concealed it.”

Griffith v. Kanamaru

ConceptionJun. 30, 1981

Reduction to PracticeJan. 11, 1984

FiledNov. 17, 1982

Griffith

Kanamaru

Griffith v. Kanamaru

ConceptionJun. 30, 1981

Reduction to PracticeJan. 11, 1984

Reasonable Diligence?

FiledNov. 17, 1982

Griffith

Kanamaru

Diligence• Does not break diligence:

– (1) poverty and illness (generally a valid excuse for lapses in diligence if the circumstance really do prevent work on the invention);

– (2) regular employment; and – (3) overworked patent attorney (excuse for delay in

achieving constructive RTP). • Does constitute a break in diligence:

– (1) Attempts by a university research to get outside funding (at least where sufficient funding is available inside the university), see Griffith v. Kanamaru;

– (2) Attempts to get commercial orders; – (3) doubts about value or feasibility of invention; and – (4) work on other unrelated inventions.

Section 103

• Nonobviousness

Why not permit trivial patents?• Profusion of Paltry Patents:

–Each patent individually will not impose significant output constraints, but ...

• Economically Significant Patents:– Technical Triviality Economic Triviality– Thus, a patent on an obvious development may impose significant output constraints.

–Policy 2: Obvious patents may compromise the incentives to make nonobvious inventions.

• Technically and economically

trivial developments. –Policy: Preventing “thickets” of

patents; increasing search costs for other inventors and businesses.

35 USC Sec 103§ 103. Conditions for patentability; non-obvious

subject matter

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Graham v. John DeereIs it obvious to move the hinge plate from position A under the shank to position 1 above the shank?

AB

C

1

3

2

Graham’s ‘811 Patent• Graham began marketing the clamp in the late

1940s or early 1950s, and continued producing it, with some modifications, for at least a decade and a half.

• Some flaws became apparent with the design over time:– The shank would rub against the fixed upper plate of the

clamp and cause wear. This wear was troublesome because the plate was connected directly to the frame of the plow and was difficult to replace.

– The shank was held within the clamp only by the spring rod with a large hole. As it was pulled backwards, it would cause wear and damage in the spring rod.

First solution to shank-breakage problem: reinforcing brace

clamp

Graham’s Spring Clamp• Graham’s second attempt at solution was

more successful.• He added a spring mounting so that the

clamp would give way when the forces on the shank were too great.

• This invention successfully reduced bending and breaking of plow parts in rocky soil.

• This invention also produced vibratory action that created alternating pockets and ridges that were capable of storing moisture that could sustain crops during dry periods.

Graham’s ‘798 Patent• Wear against upper plate and spring rod provided

impetus for design of new clamp.• This is the patent at issue in Graham’s suit

against John Deere.• Changes in the clamp:

– Hinge plate has been moved above the shank so that the shank does not come into contact with the fixed upper plate.

– The shank is secured to the hinge plate by a nut and bolt arrangement at the forward end and a stirrup at the rear.

• Graham conceived of the design in 1950 but did not file patent application until August 27, 1951.

Figure 4: Graham ‘811 Spring Clamp. The spring (66) at the front end of the clamp holds the plow shank flat against the I-beam frame. The shank is pivoting against the rear of the clamp and the pivoting compresses the spring.

The ‘811 Graham Plow

The Graham Test

• Scope and content of the prior art• Difference between the prior art and the

claims at issue• Level of ordinary skill in the pertinent

art

Graham points

• “[T]he 1952 [patent law] revision was not intended to change the general level of patentable invention.

• Ultimate question of patentability is one of law; lends itself to “several basic factual inquiries”