Patentability requirements

on novelty + the parts of

unobviousness

Chen JingFung (Grace)

@csie.ntut.edu.tw 2012/03/29

Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825

Outline

• Review:

– Patentability of 4 legal requirements

• Requirement #3: Novelty

– Prior art on 1 yr law & Specifics of Prior Art

– The law criteria of novelty

Grace@iii.org.tw & ntut.edu

Patentability – 4 legal requirements

Grace@iii.org.tw & ntut.edu

4 legal requirement

Law section

Criteria

Unobiousness 103 Can provide one or more new & unexpected results (?) Can make of innovation in the specific technology (?)

Novelty 102 new physical feature (?) new combination of separate old feature (?) new use of an old feature (?)

Utility 101 Can be regarded as a useful one (?)

Statutory class 101

5 classifications

process machine manufacture composition

New use

Patent law 35 USC 101 or 35 USC 102 or 35 USC 103

Requirement #3: Novelty:

Prior Art – The One-Year Rule

• Your invention must Not be Publicly known > One-year rule – Patent laws constraints: file a patent (PPA or

regular) application within one year (< 1 yr) after • You sell, offer for sale, commercially/ publicly use or

describe your invention, or allow another to use it without restriction

– “> 1 yr” ? <- the law can bar your invention • PTO will no longer consider it novel

• “one-year rule” under the “prior art”

Grace@iii.org.tw & ntut.edu

Novelty: Specifics of Prior Art

• Define prior art to consist of 35 USC 102

• Categories

– “prior printed publication” is the most important category of prior art

– Others prior vs. your invention’s conception

– “public-use-and-knowledge” category

• No record case/ public & a example for no a prior art

– “prior foreign patents ” category

– Prior “sale” or “on-sale ” category

Grace@iii.org.tw & ntut.edu

Novelty (1): Specifics of Prior Art-1

prior printed publications

• Any printed publication can be a valid prior art if it was published

– Before your earliest provable date of invention

– Over one year before you file your patent application

• “printed publication” includes US. & foreign patents (effective as of their filing date), books, magazines (e.g. trade & professional journal) …

• Even photocopied theses in a college library or old comic strips

Grace@iii.org.tw & ntut.edu

Novelty (1): Specifics of Prior Art-2

prior printed publications

• Computer tip (Publicly available) – info on PC utilities or

network would be a printed publication

• The “prior printed publications” category is the most important category of prior art – You generally encounter – PTO refers to (cites)

• Solution: Search patents in manly U.S. patents

Grace@iii.org.tw & ntut.edu

Fig ref: ocad.ca

PTO has used old Dick Tracy comic strips as a prior art !!

Novelty (2): Specifics of Prior Art

others prior vs. your patent

• Prior-art date for U.S. patent ? • a filing date • or claims priority of a PPA that has a filing date

– earlier than your earliest provable date of invention is considered valid prior art

Grace@iii.org.tw & ntut.edu

8 Jun 2011 9 Jun 2011 9 Aug 2011

2 months later

9 Feb 2012

6 months later

You conceive of your invention

File your patent

Goldberger issues that shows all or

part of your invention

Goldberger’s patent Goldberger’s patent wouldn’t be prior art

to your application

Goldberger’s patent application was filed <- earlier than your date of conception

PTO will no longer consider it

< per 35 USC 102 patent laws

PTO will no longer consider it novel under Section 102 (e)

<– per 35 USC 102 patent laws

Novelty (2): Specifics of Prior Art

A common misconception

• only in-force patents haven’t yet expired to count as prior art – This isn’t true

• Any earlier patent is all prior art • even if it was issued 150 years ago and

• has long since expired

– will constitute valid prior art against an invention.

• Otherwise, patents would have a lesser status than other publications

Grace@iii.org.tw & ntut.edu

Other publications patent

status

Novelty (3): Specifics of Prior Art on

“public use and knowledge” –

no written record/ public use

• No written record is also a prior art <- will defeat your right to a patent

– Earlier heat-treating process used by a blacksmith in a town (never published)

– Or show a kaleidoscope in a party with 30 attendees don’t worry: “Throw a party & lose your patent right!!”

Grace@iii.org.tw & ntut.edu

kaleidoscope

You forget to file a patent application until 13 months later <- become a prior art!!

Novelty (3): Specifics of Prior Art on

“public use and knowledge” category

• This “public-use-and-knowledge” category of prior art is almost never used by the PTO

– have no way of uncovering it

– Search only patents & other publications

– However, defendants (infringers) in patent lawsuits happen to uncover a prior public use

• They rely on to invalidate the patent

Grace@iii.org.tw & ntut.edu

Novelty (3): Specifics of Prior Art on “public

use and knowledge” - experimental exception

• Public experimental purposes for bona fide (good faith)

– It doesn’t count as prior art

• E.g.

– you build & test the durability of you new paint

• Keeping records (by photographed) on its reflectively, wear resistance, & adhesion

• It is not a prior art

Grace@iii.org.tw & ntut.edu

“painted San Francisco building”

Fig ref: botjunkie.com

Novelty (4): Specifics of Prior Art -

prior foreign patents

• Apply any foreign patent (includes Russian or former U.S.S.R) before your U.S. filing date > 1 yr

– Called prior art

– Correct: you should apply your US patent within one year

Grace@iii.org.tw & ntut.edu

Fig ref: wikipedia

Russian

U. S. S. R.

Novelty (5): Specifics of Prior Art -

prior sale + abandonment vs. pass

• Section 102 also define the actions by human to be “prior art” – Offer, sale, or commercial use your invention or prototype

in US or foreign • It’s danger for filing patent over 1 yr

• Abandonment vs. pass – make a model of your invention, test it, fail to get it to

work, or fail to sell it • Try to patent it; • if you abandonment becomes known, would lose your right to a

patent

– But if you merely stop work on it for years because of such reasons as health, finances, or lack of a crucial part, but • intend to pursue it again when possible, • the law would excuse your inaction

Grace@iii.org.tw & ntut.edu

Novelty (6): summary of prior art

• “prior-art” rules seem complicated and difficult to understand

– Simplify Section 102 someday and enact a “first to file” law; list the related prior art usually consists of

• any published writing

1. before your earliest provable date of invention

2. over one year before you file your patent application

• a filing or PPA date > your earliest provable date of invention

• any relevant invention or development (whether described in writing or not) is existing prior art

• any public or commercial use, sale, or knowledge of the invention more than one year prior to your application

Grace@iii.org.tw & ntut.edu

Novelty (7): Will satisfy the novelty

requirement ?

• Run a “patentability search” to reveal any prior inventions or reference that could be a dead ringer (similarity) – search out an actual device or published description

• Show all the features of yours & operate in the same way <- your invention == “prior art”

• The law recognizes 3 types of novelty (Section 102) – (1) Physical (hardware or method), (2) New combination &

(3) New use Grace@iii.org.tw & ntut.edu

Yellow with green polka dots

No bicycle has been painted this way before

Satisfy the req. of novelty

Satisfy the req. of novelty

Novelty (8): the law criteria of

novelty – physical differences -1

• Here your invention has some physical or structural (hardware or method) difference over the prior art – Ex. Invent a machine, composition, or article it must

be or have 1~more parts that have a different shape, value, size, color… than existed one

• Notice: lighter, faster, safer, cheaper to make or use, portable … – these factors are new results or advantages, not

physical or method step differences, and are primarily relevant to unobviousness

– E.g. Physical means five or three gears on machine

Grace@iii.org.tw & ntut.edu

Novelty (8): the law criteria of

novelty – physical differences -2

• A physical difference can also be subtle or less apparent in the hardware sense, so that it’s manifested primarily by a different mode of operation. E.g.: a) an electronic amplifying circuit that looks the same, but

that operates in a different mode — say Class A rather than Class B;

b) a circuit that is the same physically but is under the control of different software;

c) a pump that looks the same, but that operates at a higher pressure and hence in a different mode; and

d) a chemical reaction run at a substantially different temperature or pressure.

• All of these will be considered novel, even though they appear the same to the eye

Grace@iii.org.tw & ntut.edu

Novelty (8): the law criteria of

novelty – physical differences -3

• Firstly, your invention is a new process <- you don’t need any novel hardware

• Secondly, your physical novelty is basically your new way of manipulating old hardware.

• Any novel step or steps whatever in this regard will satisfy the physical novelty requirement

Grace@iii.org.tw & ntut.edu

Summary

• Introduce the requirement #3: Novelty

– Notice the date issue on “first to file” & 1 yr law

– Talk the satisfy condition on the novelty requirement

– Finally, share the law recognizes 3 types of novelty (Section 102) on

• Physical (hardware or method)

Grace@iii.org.tw & ntut.edu

Reference

• David Pressman, chapter 5, “Patent It Yourself: Your Step-by-Step Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN-10: 1413313825 – Reference by “Previous Course Slide” record set: introduce invention,

evaluate invention, WM2Patent & Patent Requirement

• Blog: http://fungsiong.blogspot.com/

– Introduce hybrid TV (hbbTV) including widget design, Android technology (API), system, ecosystem, framework, service, application…,

– Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork

– Some programming info. as Apache wookie, refactoring tech, CE-HTML, a solution about removing a backdoor “Trojan” & surveillance paper

Grace@iii.org.tw & ntut.edu