Intellectual Property

Boston College Law School

February 14, 2007

Patent - Utility

Requirements

• (1) Patentable Subject Matter

• (2) Novelty

• (3) Utility

• (4) Nonobviousness

• (5) Enablement

Utility

• General Utility

• Specific Utility

• Moral Utility

Utility?

Utility?

Novelty• 35 U.S.C. § 102. Novelty.

– “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 …

• (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 …

• (e) the invention was described in a patent granted on an application for patent by another filed … before the invention …

• (f) he did not himself invent the subject matter …• (g) before the applicant’s invention thereof the invention was made in this

country by another who had not abandoned, suppressed, or concealed it ….”

Novelty - § 102Invented Patent Filed

(a) Novelty - known (US), used (US), patented, described

(e) Previously Filed - described in a filedUS patent application

(b) Statutory Bar - patented, described, in public use (US), on sale (US)

One year

(g) Previously Invented - made in US by one who did not abandon or conceal

Novelty

• 35 U.S.C. § 102. Novelty.– “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 …

Novelty

• 35 U.S.C. § 102. Novelty.– “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 …

Novelty

• 35 U.S.C. § 102. Novelty.– “A person shall be entitled to a

patent unless -• (e) the invention was described in a patent granted

on an application for patent by another filed … before the invention …

• (f) he did not himself invent the subject matter …

Novelty

• 35 U.S.C. § 102. Novelty.– “A person shall be entitled to a

patent unless -• (g) before the applicant’s invention thereof the

invention was made in this country by another who had not abandoned, suppressed, or concealed it ….”

Administrative

• Next Assignment– Read through IV.B.3 – Novelty