Priority, Intro to 103 Prof. Merges – Intro to IP 1.24.12.
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Transcript of Priority, Intro to 103 Prof. Merges – Intro to IP 1.24.12.
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 … 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
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
5/1855
The “Critical Date” for the
Patent ApplicationBarnes Actually
Files PatentApplication
1856
Frances Lee Begins“Public Use”
3/18661855
First-to-File System: Prior Art• Question: What statutory language establishes
the first-to-file rule?
• Answer: Section 102(a)(2).
• Note that (a)(2) provides the fundamental rule that, between first filer A and second filer B, B cannot get a patent because A’s earlier effective filing date makes the application prior art to B.
• Also, (a)(2) is also the reason for exception (iii)—the “abandonment” exception—to the first-to-file rule. If first filer A abandons his application prior to publication, then B could still get a patent.
First-to-File System: Prior Art• Now let’s examine the 5 categories of prior art
in section 102(a)(1):
– Patents
– Printed publications
– Public uses
– On sale material
– Otherwise available to the public
• Questions: What’s new? What’s old?
• Answers: Next slides.
First-to-File System: Prior Art• What’s new in these five categories of prior art?
• Answer:
• Timing (of course) – art is now “prior” if it is before the effective filing date, not the invention date (consistent w/ first-to-file philosophy).
• End of Geographic Restrictions – all categories are global, including public use and on sale.
• Addition of “otherwise available to the public”– similar to old “known … by others”.
First-to-File System: Prior Art• What’s old in these five categories of prior
art?
• Answer:
• Much is old.
• E.g., old “printed publication” cases still apply, though the addition of “otherwise available to the public” category might make some cases easier.
Novelty and Priority
• Novelty is about “newness” – was the invention new, compared to the entirety of the “prior art”?
• Priority: about being first; typically, where two patent applicants both try to claim the same invention
Priority and Interferences
• A Patent Interference is a formal legal proceeding, heard before an administrative tribunal within the Patent Office
• Two (or more) rival claimants both trying to obtain a patent for the same invention
Priority outside interferences
• Sometimes inventor A has a patent, and asserts it against party B. B can defend on the grounds that A was not first to invent the invention
• B can argue that B or a third party (C, D, whoever) was first to invent
35 USC § 102(g)(1) and (2)
(g)(1) Inventor establishes [prior invention in an interference contest] and has not abandoned, suppressed or concealed . . .”
(g)(2) Invention was made in this country by another inventor who had not abandoned, suppressed or concealed it.”
Priority rule
In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. -- 35 USC § 102(g)
Two basic issues
• Who invented first?
– Determined by the “priority rule” in the third sentence of § 102(g)
• Did the first inventor “abandon, suppress, or conceal” the invention?
Abandonment
• Occurs after the invention has been made
• Subsequent to the “inventive milestones” of conception and reduction to practice
• Usually: long delay between invention and filing or invention and commercialization
Griffith v. Kanamaru
• Classic patent interference
• Griffith (Cornell)
• Kanamaru (Takeda Chemical)
Griffith v. Kanamaru
ConceptionJun. 30, 1981
Reduction to PracticeJan. 11, 1984
FiledNov. 17, 1982
Griffith
Kanamaru
Priority rule
In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. -- 35 USC § 102(g)
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.
Holding
• Griffith loses
• An unexplained break in the proof of continuous diligence during the period beginning just prior to Kanamerau’s “conception” (as evidenced here by filing date)
Kanamaru
• Has to rely on filing date for proof of all three “inventive milestones”; statute in force at the time prevented proof of foreign inventive activities other than filing
• All inventive events “rolled into” filing date
Trend: increasing globalization and
harmonization
• 1995: Foreign inventive activity allowed (any country that is a member of the World Trade Organization [WTO])
• 2011: Elimination of geographic restrictions on certain categories of US prior art (e.g., “known or used”)
Novelty finale: AIA
• The AIA preserves some of the features of the old § 102(b)
• “Grace period” for certain activities of the inventor
• Exception to first to file rule
General rule: no patent if invention in prior art before
applicant files
• Grace period is an exception to this general rule
• A period of time, after an event that would have destroyed novelty, in which the applicant can still file a valid patent
New Section 102
§ 102. Conditions for patentability; novelty‘‘(a) NOVELTY; PRIOR ART.—A person shall
be entitled to a patent unless—‘‘(1) the claimed invention was patented,
described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;
(2) [invention described in prior-filed patent applications that result in issued patents or published applications – analogous to old 102(e)]
Exception: Grace Period
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
Requirements for Grace Period
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who [derived from the inventor] [Note: New 102(b)(1)(B) allows an inventor to remove prior art created by another if the inventor published earlier than the other.]
Priority of invention
• First applicant to file now wins, usually.
• Exceptions are (i) where second filer was first to publicly disclose the invention within the 1-year pre-filing grace period; or (ii) where first actual filer derived invention from another.
• Second exception determined by a “derivation proceeding” – the heir to interferences under the old law.
Grace Period
• The new law does permit a limited grace period that exempts from the prior art both (i) the inventor’s own “disclosures”; and (ii) other parties’ “disclosures” that occur after the inventor’s disclosure.
• Grace period gives 1 year from date of activity to allow time to file.
• But the scope of the grace period is unclear based on the wording of the Act.
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?
A
B
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.
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 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