law Flashcards
Pre-AIA
35 USC 102(a)
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 by the applicant for a patent.
Before the invention date (first OA will assume this as the US filing date)
= Conception (idea + enable) + RTP
Known or used in US
o Known must be not only the invention but also how it works
o Use must be by the general public or known to the general public, secret use will not bar
By others
o The entity need only differ by one person to be “by others”
***Patent or described in a printed publication in anywhere
Pre-AIA
35 USC 102(b)
1, More than 1 year before the US/ international application date (foreign priority date doesn’t count)
2, Patented or described in a printed publication anywhere
3, Public use in US
o Mere knowledge is not enough
o Any “non-secret” use by someone unconnected to the inventor
o Experimental use exception (court 13 factors)
• Nature of the invention
• Primary purpose is experiment
• No market testing
• Non-feasible to experiment in private then public ok
• How does the inventor acts
• If the inventor thinks the test is complete then problem
• Experimental use ends with any actual RTP
• * Experimentation by another in public more than 1 year before your filing date is a bar for you, your public experimentation is not bar, experimentation by another in public under your supervision is not bar
4, On sale in US
o On sale
• secret sale counts
• need not be ready for satisfactory commercial marketing
o Offer to sell
• even if no one actually purchased it
• condition sale like if u don’t like we will take it back still counts
o grant of license or an assignment or sale of the rights without more does not trigger the bar
o inventor’s consent to sale is not required
Pre-AIA
35 USC 102(c)
inventor’s abandonment
Pre-AIA
35 USC 102(d)
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States
dont need to be granted within 12 months prior to us filing!!!
4 requirements:
o the applicant on the foreign application must be the same as the applicant on the US filing
• employer who filed in foreign country is treated the same as though the inventor filed
o same subject
o 12 months for utility applications, 6 months for design application
o the foreign patent application must be an issued patent prior to the US filing
• issue and publish the same date in US, but not foreign; so public available date doesn’t matter
• the foreign patent’s filing date is the date that counts here
Pre-AIA
35 USC 102(e)
cannot rely on matter which?
no patent if… before invention date
• domestic 102(e) patent granted, filed by another
o US filing date is the 102(e) date
• Domestic 102(e) patent application published, filed by another
o US filing date is the 102(e) date
• foreign 102(e)
o no 102(e) date for foreign applications
• international 102(e) publications
o if the international application was filed before Nov. 29, 2000: 102(e) date is when the fee, oath and translation arrive at the USPTO
o on or after Nov. 29, 2000: 102(e) date counts only when the international application designates the US, and it publishes in English (don’t assume)
A 35 U.S.C. 102(e) Rejection Cannot Rely on Matter Which Was Canceled from the Application and Thus Did Not Get Published in the Issued Patent
Pre-AIA
35 USC 102(f)
- no patent if you didn’t invent
* 102f rejection by itself alone
Pre-AIA
35 USC 102(g)
must be Made in US = claimed in a US patent application
interference: use invention date
• g(1) was made by another and was not
o abandonment, suppression or concealment
• abandonment can be inferred from conduct without express acknowledgement, trade secret is concealment
• g(2)
o ex parte 102(g) rejection, if
• 1, the subject matter had been RTP by another before this invention, and
• 2, there has been no abandonment, suppression or concealment
• first to RTP will be the patentee unless another was the first to conceive, later RTP with diligence
o 1, first to conceive
• conception: idea + game plan
o 2, RTP: actual or constructive (file application), and
o 3, with diligence
• critical period for 1st conceiver but 2nd RTPer: just prior to the entry in the field of the party who was first to RTP and continues until the first conceiver reduces to practice
• vacation, looking for fund can be bar for diligence
• attorney can break the diligence by put the case aside for a while
AIA 102(a)(1)
102(a)(1) disclosure with prior public availability date; invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the EFD
o patented:
• grant date of the patent for the prior art date, and if that date is secret, then the prior art date is when the patent was made available to the public by being laid open for public inspection or disseminated in printed form
• US grant date = publishing date, not true for other countries
o Printed publication
• reasonably accessible to the public (on web, no necessarily print)
• 1, each and every element of the claimed invention must be disclosed either explicitly or inherently, and the elements must be arranged or combined in the same way as in the claim, and
• 2, a person of ordinary skill in the art must have been enabled to make the invention from the document without undue experimentation
o public informing = know what it is and know how it works
• in public use
• on sale (on internet)
• otherwise available to the public
• student thesis in a library, posted display at a meeting, a commercial transaction that’s not a sale under UCC
o *prior art can be from inventor himself or others
o *PTO will treat admissions by the applicant as prior art (specification)
AIA 102(a)(2)
102(a)(2) patent (application) related to US with prior filing date; sm described in patent or application published or deemed published by another and was effectively filed before the effective filing date of the claimed invention.
3 types of prior arts: (1) U.S. patents; (2) U.S. patent application publications; and (3) certain WIPO published applications
o WIPO-published applications
• WIPO publications of PCT applications that designate US are treated as UC patent application publications for prior art purposes
• Regardless of international filing date, whether published in english, or whether PCT international application enters the national stage in the US
o Names another inventor: need only one different person to be another, but can be A/AB within original inventors ABC
AIA 102(b)(1)
102(b)(1): exceptions to 102(a)(1), not a prior art if
• 102(b)(1)(A) grace period disclosure by inventor or obtained form inventor; exceptions, if within the 1 year grace period
o the disclosure was made by the inventor, or
o by a joint inventor, or by another who obtained it directly or indirectly from the inventor or joint inventor
o 1.130 affidavit to establish a disclosure is not prior art
• 102(b)(1)(B) grace period intervening disclosure by 3rd party; exceptions, if within the 1 year grace period o 3rd party disclosed o but the subject matter has already been disclosed by the inventor or joint inventor before (but this one needs to be within 1 year to not be count as a prior art itself) o ***even if above satisfied, if the 3rd party disclosure is specific but inventor’s disclosure is generic then 3rd party is still prior art • appropriate affidavit or declaration under 37 CFR 1.130(a) (attribution) for 102(b)(1)(A), or 1.130(b) (prior public disclosure) for 102(b)(1)(B)
AIA 102(b)(2)
102(b)(2): exceptions to 102(a)(2), not a prior art if
• 102(b)(2)(A) disclosure obtained from inventor
• 102(b)(2)(B) intervening disclosure by 3rd party
o after the sm had been publicly disclosed by the inventor, or from him
o only the claim that not covered by the first inventor disclosure is prior art
o species
AIA 102(c)
102(c) joint research agreement
• The sm disclosed was developed and the claimed invention was made by/ on behalf of one or more parties to a joint research agreement that was in effect on or before the EFD
• Claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and
• The app for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement
Claims Must Particularly Point Out and Distinctly Claim the Invention
“effective amount”
2173
1.131
Swearing back under 1.131 (pre-AIA 102(a) and 102(e) only)
o Establishing by submission of affidavits or declarations an earlier date of invention based upon:
• An actual reduction to practice, or
• Conception and diligence from the critical date to the actual or constructive (filing) reduction to practice
o Prior art can not be removed if it claims the invention, interference
1.132
Affidavit practice under CFR 1.132
o Used to submit facts to rebut prima facie showing of obviousness, to establish utility or to establish enablement
o Proof of secondary considerations can be submitted in reexamination and reissue, even include evidence that were not available before the issuance of the original patent
o Can also establish utility, operability and the like
102(e)!!!!!!!!!!!
example: An uncontradicted declaration by A asserting that the subject matter relied on by the examiner in reference P constitutes A’s sole invention, with the result that Reference P is not available as prior art against the claim.
1.130
37 C.F.R. 1.130 Affidavit or declaration of attribution or prior public disclosure under the AIA
The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b).
appropriate affidavit or declaration under 37 CFR 1.130(a) (attribution) for 102(b)(1)(A), or 1.130(b) (prior public disclosure) for 102(b)(1)(B)
102 statutory bar
bcd
The Patent Cooperation Treaty (PCT) establishes a system for filing international patent applications. PCT is applicable to ? not ?
utility; design
PCT case: The 102(b) statutory bar is measured?
back from the PCT filing date
how to file PCT
no fax
international stage
chapter I:the applicant has one opportunity to amend the claims within 2 months after establishment of search report
the application is published at 18 months
applicant may file a demand for Chapter II proceedings (19 month)
applicant may enter the national stage in any designated state (30 month)
Chapter II
if the applicant files a chapter II demand by the 19 month date, the application will be subjected to international preliminary examination before an international preliminary examining authority (IPEA)
national stage
national stage
to enter must file?
National Stage – 365(c)
Deadline to enter national stage is 30 months from first priority date/PCT filing date. To enter US national stage, applicant must file: 1) fee, 2) when required, a copy of the international application and English translation, 3) when required, amendments with English translations, and 4) oath/declaration of the inventor. In practice, usually the fee and cover sheet are all that is required by the 30-month deadline.
A petition to revive may be filed if the application does not meet the necessary requirements by the 30-month date.
The application is subject to publication if the PCT application was filed on or after 11/29/00.
1810: Getting the International Filing Date:
- At least one applicant must be a U.S. Resident to use the U.S. as an RO and get an International Filing Date
- The IA must be in English
- The IA must contain at least the following:
- An indication that the app is intended to be an IA
- The designation of at least one Contracting State (member) of the Patent Cooperation Union;
- The name of the applicant (before 20040101 this had to be all applicants, but on or after 20040101 it only needs to be 1 applicant).
- A section that contains a description; (starting on its own page; this includes necessary drawings too)
- A section with at least 1 claim (again, separate page).
If you want to demand a Chapter II search, you must do so before
i) if the IA is filed on or after 1/1/04, either 3 months from the transmittal of the international search or 22 months from the priority date, whichever is later; or ii) if the IA is filed before 1/1/04, 19 months from the priority date.