Novelty Beyond 102a Patent Law Prof Merges 9

Novelty Beyond 102(a) Patent Law Prof Merges 9. 16. 2010

Agenda • In re Hafner • Section 102(e) –Inventive entities • Section 102(f)

In re Hafner Klaus Hafner, Univ of Darmstadt, GDR

In re Hafner st German Apps 1 US App filed 1959 Aug. 1960 Expanded US App filed: includes utility July, 1964

In re Hafner st German Apps 1 US App filed 1959 Aug. 1960 Intervening Ref 1 Expanded US App filed July, 1964 Intervening Ref 2 – both references disclose only structure

35 USC § 120 • US Implementation of international “Paris Convention” for patent priority (1890) (www. wipo. org) • Preserves US priority based on foreign priority filing • “National Treatment” principle

Hafner: Structure vs. Use 1/1/2001: Annals of Chemistry: Structure Disclosure

Use Disclosure US Pat Application 6/1/2001 I have found this chemical useful for treating cancer. . .

Hafner • The 1961 publication enables for purpose of anticipation even though it does not enable for purposes of 112. • Key difference is that enablement for anticipation does NOT require a known use; section 112 does. • Anticipation prevents any “backsliding” from the public domain. Prior art structure cannot be patented even if the prior art does not yet have a use!

Hafner, cont’d • What is Hafner’s argument? It is “inconsistent and unfair” that the reference anticipates while the early filing does not establish utility, and therefore priority • What is Judge Rich’s holding? – TOO BAD!

Obscure prior art • Actual access is not the test • In re Hall – single copy of a thesis in one library; Klopfenstein, single copy of a “poster session”

In each case. . . • The reference is at least theoretically available • What about a case where a reference is not even theoretically available? – Welcome to § 102(e) !!

Oliver Wendell Holmes, Jr. 1841 -1932

You think I look baggy? Wait til you’re old!

“Get down, you damn fool, before you get shot!!”

2 Patents in Alexander Milburn Whitford 3. 4. 1911 Filed: 1. 31. 1 911 Issued: 6. 4. 1912 Issued: 2. 6. 1912 Clifford

102(e): Compare DISCLOSURE in spec of Patent A vs. CLAIM in Spec of Patent B Specification, Pat. ‘ 001 Claims, Pat. ‘ 002 Claim Elements Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar

Why would anyone disclose but not claim an invention?

Why would anyone disclose but not claim an invention? • Related field • Interested only in one application • Oversight

First application: ‘ 001 Patent Disclosed: Broad disclosure X Claimed: narrower embodiments

002 Patent, Second application X CLAIMS what was disclosed, but NOT claimed, in earlier application

Whitford: Claimed 3. 4. 1911 Filed: 1. 31. 1 911 Issued: 6. 4. 1912 Issued: 2. 6. 1912 Clifford: Disclosed but not claimed

“The delays of the patent office ought not to cut down the effect of what has been done. ” – p. 423

Holmes’ reasoning • Note emphasis on who was “prior inventor” • Is there a sense that allowing the claims to Clifford would somehow deprive Whitford of credit? Or somehow harm the public?

Holmes’ reasoning • Emphasis on who was “prior inventor” Two separate issues – Is Whitford’s patent anticipated by Clifford reference? – VS. Who has “priority” – ONLY RELEVANT IF WHITFORD AND CLIFFORD BOTH CLAIM THE SAME INVENTION

What if they HAD claimed the same invention?

This would be a priority case. . . • If Whitford and Clifford had CLAIMED the same subject matter • Covered under § 102(g) INTERFERENCE

Alexander Milburn Codified in § 102(e): No patent if – (e) Invention was DESCRIBED [but NOT claimed] in. . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention

• “Clifford had done all he could do to make” description public • “Mailbox rule” for disclosure purposes? – as with Acceptances in Contract law?

Codified in Section 102(e): No patent if – (e) Invention was DESCRIBED [but NOT claimed] in. . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention

102(e) Issues • Patent must be granted; then application is prior art as of FILING DATE: Nunc pro tunc – Provisional rejections • Application must be “by another” – technical definition, inventive entities • Amendments: “filed in the US” -- international priority filings; published US applications; provisional applications

MPEP 706. 02(k) Provisional Rejection … Under 35 U. S. C. 102(e) … Where two applications of different inventive entities are copending, not published under 35 U. S. C. 122(b), and the filing dates differ, a provisional rejection under 35 U. S. C. 102(e) … should be made in the later filed application. . . www. uspto. gov

Why “provisional”? § 102(e): No patent if – (e) Invention was described in. . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention. . .

“Nunc pro tunc” • “Now for then” • When patent 1 ISSUES, the application for patent 1 becomes prior art against patent 2 AS OF THE FILING DATE OF PATENT 1. . • If patent 1 never issues, earlier filed application never becomes prior art

Topic 2: Inventive entities • The prior application of A can be cited against the later application of A + B under 35 USC 102(e) • Different “inventive entities” create prior art against each other

MPEP 706. 02(k) Provisional Rejection … Under 35 U. S. C. 102(e) … Where two applications of different inventive entities are copending, not published under 35 U. S. C. 122(b), and the filing dates differ, a provisional rejection under 35 U. S. C. 102(e) … should be made in the later filed application. . . www. uspto. gov

MPEP 706. 02(f) (cont’d) Note that, where there are joint inventors, only one inventor [need be] be different for the inventive entities to be different and a rejection under 35 U. S. C. 102(e) is applicable even if there are some inventors in common between the application and the reference.

Inventive Entities Inventor A

Inventive Entities - Overlap Inventor A Inventors A + B

Inventive Entities – Overlap II Inventors A + B + C

Other Variations A+B+C+D A+B A+C B+C

Inventive Entities - Overlap Application 1 Inventor A Inventors A + B

Inventive Entities - Overlap Application 1 Inventor A Application 2 Inventors A + B

Overcoming 102(e) rejection • Combine applications – eliminate the reference • File affadavit that claimed invention was derived from 102(e) prior art application

Overcoming 102(e) rejection (C) Filing an affidavit or declaration under 37 CFR 1. 132 showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention "by another“. .

102(e) amendments • PCT Filings: 102(e)(2) “treaty filings” • Published patent applications – section 122(b) – Changed 1999 – “Backdate” publication to filing date

Fine Points • Foreign priority filings – Different treatment; only US Filings and their precise equivalents under PCT trigger section 102(e) – In re Hilmer (35 USC 119) • Provisional applications – 35 USC 111 – Before 2008, assumed to trigger 102(e) – Now, solidly established: Ex parte Yamaguchi, 88 U. S. P. Q. 2 d 1606 (Bd. Pat. App. & Interf. 2008)

MPEP 706. 02(f) Rejection Under 35 U. S. C. 102(e) [R-3] - 700 Examination of Applications 35 U. S. C. 102(e) is mostly utilized when the publication or issue date is too recent for the reference to be applied under 35 U. S. C. 102(a) or (b). In order to apply a reference under 35 U. S. C. 102(e), the inventive entity of the application must be different than that of the reference.

Agenda • Section 102(e) – Inventive entities • Section 102(f)

102(f): “The (f) is for Fraud”

35 USC § 102(f) “A person shall be entitled to a patent unless – *** (f) He did not himself invent the subject matter sought to be patented

“Campbell” Invention

Flexible Feed Track

Zimmerman’s belt buckle

Two Main 102(f) Scenarios • “Derivation” (invention theft) a la Campbell – Requirements: (1) Conception by Person A; (2) communication (enabling) to person B • Inventorship rejections and disputes – PTO and litigation • Related to 35 USC § 256 – Misjoinder (adding non-inventor to patent) – Non-joinder (omitting inventor from patent)

Typical derivation scenario ROBINSON LABS, INC. , Plaintiff, v. WALLS INDUSTRIES, INC. , Defendant. Sept. 30, 2003 WL 22272122 (D. Minn. )

ROBINSON LABORATORIES

Robinson Labs • 1. A multi-dimensional camouflaged garment, the garment serving to camouflage a wearer thereof by presenting an external appearance to an observer that tends to be indistinguishable from the environmental feature against which the wearer is observed, comprising: a garment external surface, being viewable by an observer and having a first portion and a second potion; the first portion of the garment external surface being formed of a substantially three dimensional material; and the second portion of the garment external surface being formed of a substantially two dimensional material.

the first portion of the garment external surface being formed of a substantially three dimensional material; and the second portion of the garment external surface being formed of a substantially two dimensional material. US Pat 5, 695, 835

Robinson Here, the crux of this analysis is whether the bow hunters first conceived of the invention claimed by the '835 Patent. The bow hunters put forth the idea of cutting off the leaves so as to remove the safety hazard. This was a specific settled idea addressing a solution to the problem at hand. Anyone with a pair of shears could reduce the invention to practice. The Court concludes that there is no material question of fact as to whether the bow hunters had conceived of an invention.

To establish derivation the party asserting invalidity must prove both prior conception of the invention by another and communication of that conception to the patentee “sufficient to enable [the patentee] to construct and successfully operate the invention. ” International Rectifier Corp. v. IXYS Corp. , 361 F. 3 d 1363, 1376 (Fed. Cir. 2004).

Transocean Offshore Deepwater Drilling, Inc. v. Global. Santa. Fe Corp. 434 F. Supp. 2 d 836 (SD Tex 2006) Genuine issue of material fact existed as to whether [fax], which included drawings of alleged infringer's offshore exploration and/or development drilling apparatus and which was sent to inventor of patented rig, was prior art for the purposes of showing derivation, precluding summary judgment in favor of patentee on alleged infringer's derivation defense. 35 U. S. C. A. § 102(f).

102(f) and “nonjoinder” "If nonjoinder of an actual inventor is proved by clear and convincing evidence, a patent is rendered invalid. " Pannu v. Iolab Corp. , 155 F. 3 d 1344, 1349 (Fed. Cir. 1998). -- at 1349.

However, "[i]f a patentee can demonstrate that inventorship can be corrected as provided by [35 U. S. C. § 256], a district court must order correction of the patent, thus saving it from being rendered invalid. " Id. at 1350.