Statutory Bars

Prof Merges

Patent Law – 9.30.2010

Agenda

• Finish Dow – 102(g)(2), prior invention of another as prior art: one last issue

• Introduction to Statutory Bars

• Compare novelty/anticipation (102(a)) to statutory bars (102(b))

Park - Dow

C: late August, 1984

R to P: 9/13/1984

AVI Employees

March 3, 1984: R to P (C?)

35 USC § 102(g)(1) and (2)

(g)(1) Inventor establishes [prior invention] in interference 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.”

Pennock v. Dialogue

• 1793 Act

• Window into early 19th C. patent law

Dec 7, 1736: 1st Volunteer Fire Department, Ben Franklin, Philadelphia

Reuben Haines, Philadelphia Hose Co. No. 1, 1803

In 1807, two of Reuben Haines’ fellow company men, James Sellers and Abraham Pennock, invented a riveted leather hose that revolutionized the design and again put Philadelphia in the forefront of firefighting ingenuity. [T]he riveted Sellers & Pennock hose worked well enough to allow suction engines to be created, changing forever the design and power of pumpers, which could be linked in tandem to bring water from a distance and without a bucket brigade.

1793 Act: Sections 1 and 6

• Section 1: When a person alleges they have made an invention “not known or used before the application” they get a patent

• Section 6: Infringer may prove that thing patented was “not originally discovered by the patentee, but had been in use … anterior to the supposed discovery by the patentee”

Argument for plaintiff-patentee

• Invention was under control of patentees at all times; no intent to abandon it

• Policy: don’t dwell on technicalities; don’t be like the British!

Justice Joseph Story

R. Kent Newmyer, Supreme Court Justice Joseph Story: Statesman of the Old Republic (UNC Press

1986)

“In these [early patent] cases [Story] moved away from undue reliance on English law in the direction of an American patent law that would favor inventors and, following the spirit of the Constitution, serve national interest by promoting technological progress. . . . Story’s authority . . . was of immense importance in giving legitimacy to the new position. [H]e was identified by contemporaries as the pioneer in the liberalization of American patent law.”

Argument for defendant

That mere invention gives no right to an exclusive use, unless a patent is obtained; and that if at a time when no right is infringed, the public fairly acquire possession of it, the inventor cannot, by subsequently obtaining a patent, take it away.

Sargeant argument (cont’d)

That the inventor, by abstaining from getting a patent encouraged the public to use the article freely, and thus benefited his own manufactory. And he is not at liberty, when this advantage is exhausted, to turn round, and endeavor to reach another and a different kind of advantage, by appropriating the use exclusively to himself. . . .

Policies

• Invention bestows an “inchoate” right – must be “perfected” (statute of limitations)

• Extension of monopoly: long period of (trade secret) use, then patent term

• Public reliance: reliance on nonexistence of patent

Justice Story Opinion

What then is the true meaning of the words “not known or used before the application?” They cannot mean that the thing invented was not known or used before the application by the inventor himself… The words then, to have any rational interpretation, must mean, not known or used by others, before the application.

[T]hus construed, there is much reason for the limitation thus imposed by the act. … [T]he main object [of the 1793 Act] was “to promote … progress”; and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible. – p. 515

If an inventor should be permitted to hold backfrom the knowledge of the public the secrets of

his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any [use of the invention],

It would materially retard the progress of science and the useful arts, and give a premium to those who should be least prom pt to communicate their discoveries. – pp. 515-516

Key policy behind the statutory bar: prevent extension of monopoly

Section 6:

It gives the right to the first and true inventor and to him only; if known or used before his supposed discovery he is not the first, although he may be a true inventor; and that is the case to which the clause looks.

Novelty, in other words

A provision, therefore, that should withhold from an inventor the privilege of an exclusive right, unless he should, as early as he should allow the public use, put the public in possession of his secret, and commence the running of the period, that should limit that right; would not be deemed unreasonable. It might be expected to find a place in a wise prospective legislation on such a subject. If it was already found in the jurisprudence of the mother country [i.e., Great Britain] …. – p 516

Please note: 102(a) v. (b)

• The prior art event in Pennock was the activity of the inventors themselves

• Contrast with section 102(a): “… known or used by others . . .”

• You cannot destroy your own novelty, but you can (and inventors often do) create statutory bars

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

Abandonment, § c.

Schematic Representation of § 102

§ 102 (b): Statutory Bars[1] No patent if, more than one year prior to application,

invention

[A] patented or

[B] described in printed publication

[C] anywhere, or

[2] invention --

[A] in public use or

[B] on sale

[C] in this country.

Statutory Bar Dates

One Year Grace Period

Dec. 20, 1996

PatentApplication

JonesJones

Oct. 1995 Dec. 20, 1995

Jones

§102(b) hurdle

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

Egbert v. Lippmann

• Why not a novelty case?

• What are the essential facts?

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?

Justice William Woods

• Sturgis evidence – p. 524

–Why did Barnes introduce it?

–How did it affect the case?

Conclusion

• “The inventor slept on his rights for 11 years . . .” – p. 525

Samuel F. Miller, on Court 1860-1890: dissent in Egbert

Moleculon Research

• When did Nichols invent his cube?

• Who saw/used it?

• When was a pat app filed?

Public Use/On Sale

• What was CBS’ public use evidence?

– Why not successful?

– P 530

• Contra Egbert?

In TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965 (Fed.Cir.1984), the inventor was a dentist who installed the inventive orthodontic appliance in several of his patients. Although the inventor had not obtained any express promise of confidentiality from his patients, this court did not consider the use "public" because the dentist-patient relationship itself was tantamount to an express vow of secrecy. Id. at 972.

Metallizing Engineering

Judge Learned Hand

What is the critical date?

•Aug. 6, 1941

What is the main issue?

• Sale of output from a machine does not disclose the machine to the public; is it nevertheless a “public use”?

– Compare: Peerless Roll, Gillman v Stern

Holding: YES

•Extension of monopoly is the key policy; public use found here, patent invalid: p. 535

§§ 102 (a) and (b) Prior Art Chart

102: Was Invention: By: In: Before: If yes:

a known others U.S. Date of invention N

a used others U.S. Date of invention O

a patented others any country Date of invention

a published others any country Date of invention P

b patented anybody any country 1 year prior to filing A

b published anybody any country 1 year prior to filing T

b in public use anybody U.S. 1 year prior to filing E

b on sale anybody U.S. 1 year prior to filing N

T