Prior Art Flashcards
What are the novelty/statutory bar/interference sections of the Patent Act?
102(a), (b), and (g)
When do you have to have invented? What do we call these questions?
Novelty: in a first to invent system, this is important; was it new when you came up with it? (102(a))
Statutory bars: did you fall asleep after you invented? How long did it take you to file? What else happened in the world (102(b))
What is a reference?
some item that is recognized as evidence of what we knew at a certain time
What is a critical date?
date we care about for whatever legal question we’re asking (e.g., novelty: day you invented it);(e.g., statutory bars: related to the day you file)
What is an effective date?
date we actually knew something (as in, the effective date of a reference)
What is anticipation?
a reference anticipates a claim when a reference has an effective date before your critical date, and the reference has all elements of your invention (if your invention has 4 elements, I need a prior art reference with at least those 4 elements)
What are the two exceptions to anticipation?
- inherent anticipation
2. accidental anticipation
What is inherent anticipation?
the element has to have been there as a matter of scientific truth
What is accidental anticipation? What are the cases?
where you’re waiving off technical anticipation (Schreiber - Tilghman - Americium)
What is in Re Robertson about? What was the invention? How did they get to Wilson and Robertson? What was this case really about; isn’t this easy?
the diaper case; the invention was to introduce a third attachment location, so that there is a better seal when there is poop in it (was it for the placement of the seal? three is better than two? unclear)
the 2nd fastener in Wilson functions as a 3rd one as well, so it looks like Robertson’s (claim construction - which is what this was really about)
What was Tilghman v. Proctor about?
about the engine that accidentally created fat acid did not anticipate Tilghman’s process for breaking down fat into glycerine and free fat acids
just not sure if there is the substance created (Schering says)
What was Schreiber about?
Oil can that anticipated a popcorn dispenser
Shouldn’t have had to look at oil can prior art! accidental anticipation
Court found it was anticipated by the oil can though - anticipation is not about what you should have looked at; it’s literal
What was in Re Seaborg?
the Fermi reactor was agreed to pre-date the invention and result in Americium, so it literally infringed, but it was produced in such minuscule amounts and under such conditions that its presence was undetectable (but the BL answer is unclear)
no anticipation - Lichtman says the intuition is that Fermi didn’t really have it
have to be sure it happened and it has to be detectable (Schering says)
Can the inventor in Seaborg enjoin the Fermi reactor?
No
What is Schering? Why did the court say no?
the Loratidine case: trying to double patent; would patent the metabolite that happens later when you take the pill; so would only get patent on that metabolite after; wouldn’t patent things that do what the previous did
the court said no patent though. why? not because it’s people extending the functional life of their patent; rather,
What are the problems with Seaborg?
What is “detectable”? As opposed to “detected”?
Why might we want to reward people like Schering Seaborg, and Tilghman?
Because they are bringing things we didn’t know; maybe DCL can be used in cases where L can’t
didn’t understand it or try it to make it efficient
What is the mirror image thing about infringement and anticipation?
That which does not anticipate cannot infringe, and that which does not infringe cannot anticipate
So, what are the outliers on anticipation? Why?
Schreiber, and Schering; because they don’t make the policy decision that what was invented brought something we want/need/didn’t actually (rather than constructively) have before
What about Indiana Jones and Schering?
Schering won’t allow naturally occurring items (metabolite produced by ingesting L); nature did it, you didn’t; it was detectable; consistent with Seaborg
What is the intellectual basis for detectable?
Lichtman doesn’t get it; neither do I
Why is Americium patentable?
it’s man made
What could be argued about detectable and Schering?
that it should be detected, because it was detected in Schering; detectable but undetected should still be patentable
box Schering into its facts and say that it should be about bringing things into the world
What are the two provisions of 102(a)?
A person shall be entitled to a patent unless, 1. Known or used by others in this country
2. Patented or described in a printed publication anywhere
before the invention (conception) thereof by the applicant for patent.
What are the 102(a)(1) cases?
Rosaire and National Tractor
What was National Tractor? What is the rationale like?
a tractor power stopper (an invention for this spectator sport - gets heavier over time); the prior art reference was a design on a tablecloth by 2-3 people; don’t have the tablecloth, but have testimony from more than one person; what they drew was all elements of the power stopper
this isn’t “known or used by others” because it’s not public; writes “publicly” [used by others] into the law; didn’t get to the real world (kind of like an accidental anticipation rationale)
intuition is that the public isn’t going to learn from these guys
What was Rosaire?
walk around and pick up some rocks was public enough, because there was a risk that all the people in the industry who knew that weren’t locked in by contract would talk about (which they in fact did, since we’re talking about it)
What was in Re Klopfenstein?
The applicants sought a patent for methods of preparing foods comprising extruded soy cotyledon fiber. The Board denied the application because the methods had already been described in a printed publication more than one year before the date of the application. Almost two years before they filed their application, the applicants had presented a printed slide presentation at a meeting of chemists and at a university. The presentation was displayed continuously for two and a half days and one day, respectively. Every limitation of the invention was disclosed in the presentation. Although no copies of the presentation were disseminated, there was no prohibition on note-taking or copying. Only a few slides recited what was not already known in the field. The presentation was never catalogued or indexed in any library or database. In affirming the Board’s decision, the court held that, because the presentation had been made publicly accessible, it constituted a printed publication for the purposes of § 102(b). The court held that the fact that the presentation was never distributed to the public and was never indexed did not preclude a finding that it was a printed publication.
Is everything on the internet that was uploaded early enough, going to be a 102(a)(1) reference? 102(a)(2)? reference?
Some major organizations say so as long as it’s indexed
problem: dating of stuff online
What was in Re Hall?
a PhD student wrote a document that anticipated an invention; three advisers received it, and that’s it
rule was that as long as it’s in a library and in a card catalog, then it’s prior art
Why would a client put associates on a plane to look for prior art around the world? (2)
- if there is a huge money risk (on P or D’s side)
- put pressure on P’s to settle cases (because the more money they ask for from the infringing D, the more likely the D is trying to find prior art to make the number drop to 0, so P is more likely to drop its number)
What is 102(g)? What are the two parts?
“A person shall be entitled to a patent unless
Intereferences: (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
Category of prior art: (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.
Both: 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.”
When did you invent in terms of 102(a)?
look to 102(g) to borrow vocab and concepts to use to define “invention”
What are the big concepts from 102(g)? (5)
- Conception
- Reduction to practice
- Diligence
- Abandonment/Suppression/Concealment
- Filing
How can you satisfy RTP?
- Write a patent application (constructive)
2. Build a working version
What is conception?
When you have all the elements of your invention in your head (corroborated by evidence)
What is diligence?
were you working on it between conception and RTP
What is abandonment, suppression, concealment?
after non-constructive RTP and before filing: did you hide it from the world? did you abandon it - showing that you didn’t want to go forward with it? did you hide it once you built it? did you conceal it?
What are 102(g)’s three roles?
- Vocabulary used for 102(a)
- Sets up the rules for interferences (g)(1)
- Acting as its own category prior art
What is an interference?
a situation where two parties show up having filed the same invention, to determine who invented first
How is 102(g) its own category of prior art? What’s dangerous about this type of prior art?
One of us didn’t ask for the patent (and now it’s probably too late), and wants to blow up the other’s patent (who did file)
It can be secret - doesn’t have to be public under 102(a)
Do you have to provide your conception date when you file?
No
Are interferences common? What does this mean for the AIA changes?
No: they are very rare, successful or not. Those who filed second very rarely win; so AIA might not change much in practice.
In the end, is the publicly accessible standard of 102(a) really that ridiculous?
Maybe, but it makes people more likely to settle because they’re worried that someone will work hard to blow up their patent; so on balance, it might be OK
What is the interferences (102(g)(1)) summary?
The first to reduce to practice (RTP) wins unless 2nd to RTP can prove earlier conception AND diligence from time prior to first’s conception to subsequent RTP or filing. And constructive RTP is only filing, not a publication. And, if there is abandonment/concealment/supression by someone, that wipes out everything before that ACP.
When is 102(g)(2) not 102(a)?
When my ASC screws me up from blowing up your patent
How are Interferences run?
by Board of Patent Appeals and Interferences: Trial-like proceeding in front of a three-person panel; look at evidence, try to figure out who is the true first inventor
What are the 2 ways to trigger an interference?
- File a patent application, and the examiner is like, I’ve seen this before, and the examiner brings the claim
- Patent issues, you file, and either you or the examiner notices and brings the claim
Who is the Senior Party?
the guy who filed first in an interference
Who is the Junior Party?
the guy who filed second in an interference
What is a “count”? Why is this a thing?
A sample claim that covered the invention that both parties say they invent
Because we both describe it differently, patent office makes a patent that someone would win during the trial, then the winner could tweak the language through normal patent prosecution
A: C (1/1/90) - RTP (6/1/90) - F (2/1/91)
B: C (3/1/90) - RTP (8/1/90) - F (12/1/90)
Who wins? What’s the policy lesson?
A wins, because he reduced to practice first, and B did not conceive
Policy: helping the little guy who is first to conceive but second to file
A: C (7/4/95) - D (11/25/95) - RTP (12/25/95) - F (1/1/96)
B: C (8/1/95) - RTP (9/1/95) - F (10/1/95)
Who wins? What’s the policy lesson?
B wins, first to RTP, and other guy wasn’t diligent until after B conceived
Policy: first to invent is great, but be diligent or tough luck
A: C (3/21/93) - D (3/21/93) - RTP (12/1/93) - F (12/1/93)
B: C (4/1/93) - D (4/1/93) - RTP (5/1/93) - F (8/15/93)
Who wins? What’s the policy lesson?
A wins, B loses, A’s conception and diligence was before B’s RTP
Policy: be openminded to people that don’t have the resources to build stuff (can’t build a nuclear reactor)
A: C (2/1/95) - D (2/1/95-4/1/96) - Not D (4/1/96-1/97) - D (1/97) - RTP (12/97) - F - (1/98)
B: C (3/96) - D (3/96-4/96) - Not D (4/96-9/97) - D (9/97) - RTP (11/97) - F (12/1/97)
Who wins? What’s the policy lesson?
B wins, because first to RTP, and A’s real D wasn’t before B’s C
Policy: what if good-economic reasons limits diligence? too bad, has to be start with consistent diligence.
Why do court’s do this? fraud; hard to validate that you stopped for good economic reasons - every inventor would say that; still kind of want a patent system that doesn’t punish good economic decisions, so this is frustrating
A: C (2/1/95) - D (2/1/95-4/1/96) - Not D (4/1/96-1/97) - D (1/97) - RTP (12/97) - F - (1/98)
B: C (3/96) - D (3/96-4/96) - Not D (4/96-9/97) - D (9/97) - RTP (1/98) - F (2/98)
Who wins?
A wins, A is first to RTP, and B’s C is not before A’s C
A: C (1/1/96) - RTP (2/1/96) - ASC - C - (2/02) - RTP (2/02) - F (2/02)
B: C (1/1/97) - D (12/01) - RTP (4/02) - F (4/02)
Who wins? What’s the policy lesson?
A loses, was first to RTP, but B’s C and D was before A’s C
Policy: once you reduce to practice, hurry up and file; don’t ASC or you lose everything
if you’re going to vacation, do it before you RTP, because then you just lose diligence, not conception
What are patent races usually about?
the race to conceive, not to RTP or file
What is the balance between being scared of interferences and filing first? (in situations where actual RTP isn’t likely)
get a good spec, you can fuss with claims later (limitation: sometimes when you are writing the claims, you get a better idea for the spec), so you can get RTP first (constructively), but if your claims spec isn’t fully developed, maybe spend a little more time, because then you’re sacrificing the whole thing (your patent is worth less with a bad spec and claims)
What are provisional applications?
use an article as the spec, and then decide later whether to kick it further along
cash-strapped people usually, like UCLA
What is 102(e)?
it’s about inventions that are described in patent applications, which is a private conversation with the govt. for 18 months (where it’s either published or issues)
pretends this period of time doesn’t exist; acts like the govt. is immediate
as soon they issue or publish it, it becomes prior art, but at the filing date (not the issue or publishing date)
What is 102(b)?
triggers based on your date of filing (different critical date) - one year prior to the date of filing
trying to get you to hurry up and file (even if you are first to invent)
not a first to file provision: one year grace period
What is the cool thing about 102(b)?
you can trigger it against yourself
e.g., you sold it (Moleculon)
What is Moleculon?
Rubix cube case: about whether he sold it a year before he filed. Court said that selling his idea wasn’t a sale of his invention.
Appellant sought review of an order from the district court finding infringement. The appeals court affirmed in part and reversed in part. The appeals court affirmed the infringement of certain claims holding that the patent was not in public use or on sale pursuant to 35 U.S.C.S. §102. The appeals court reversed the finding of infringement as to certain claims holding that the court improperly interpreted the claims. First, the appeals court held that the subject claims were not in public use because appellee did not give over the invention for free and unrestricted use by another. The appeals court next found that the invention was not on sale because the assignment or sale of invention rights was not a sale. Lastly, the appeals court held that the interpretation of the subject claim was erroneous because the court’s interpretation expanded the scope of the structure recited in the claim.
Where does the Schering case come in for 102(b)?
you make a statutory bar against yourself because you had it (and sold it?) before
Why doesn’t a sale of an idea count, as opposed to a sale of embodiment? (Moleculon question)
want to have a system where it doesn’t really matter who gets the idea; want to be able to trade patent rights
where small guys who have good ideas, but can’t do anything with it
might be some cheating on the edges
What is Pfaff?
ready for patenting case; brought the bar down on himself (computer chip engineer)
Petitioner developed a computer chip socket and prepared detailed engineering drawings describing the invention. A company placed an order for the sockets after petitioner showed it the drawings in March 1981. However, the invention was not reduced to practice until July 1981, and petitioner filed a patent application in April 1982. Petitioner brought an infringement suit against respondent, but judgment in petitioner’s favor was reversed by the court of appeals. The Court affirmed, holding that petitioner was barred from patenting his invention as it had been on sale more than one year prior to the patent application, pursuant to 35 U.S.C.S. § 102(b), due to petitioner’s marketing of the product to the company. It was not necessary to show the invention was reduced to practice at the time in order for it to have been on sale. Rather, the on-sale bar to patentability applied where the invention was the subject of a commercial offer for sale and the invention was ready for patenting, which could be demonstrated either by reduction to practice or, as here, by preparation of descriptions that were sufficiently specific to enable one skilled in the art to practice the invention.
What is Metallizing?
The district judge found that plaintiff inventor’s main purpose in his use of his process more than one year before the date of application was secret, and for that reason its predominantly commercial character was prevented from invalidating the patent. The reviewing court overruled the case relied on by the lower court in reaching its decision. The court held that, if plaintiff went beyond the period of probation, he forfeited his right regardless of how little the public may have learned about his invention. Plaintiff could continue for more than a year to practice his invention for his private purposes of his own enjoyment, and later patent it. But that was not an exception to the doctrine, for he was not then making use of his secret to gain a competitive advantage over others, and did not thereby extend the period of his monopoly.
What is required to trigger a 102(b) on-sale bar, according to Pfaff?
- Commercial offer for sale, AND
2. Invention must be ready for patenting
According to the Moleculon court, how could it have been different?
if he transferred the prototype (which doesn’t seem right; just idea? prototype is RTP)
According to Pfaff, how can you show an invention is ready for patenting?
- RTP before critical date
OR
- Drawings or other descriptions that are sufficiently specific to enable a person skilled in the art to practice the invention
Timeline:
1: Invents new mouse trap
2: Makes a specific public offer for sale
3: Consummates the transaction
When does 102(b) clock start?
2:
- Commercial offer for sale
- Invention is RFP
Timeline:
1: Invents/RTP
2: General offer
3: Consummates offer
When does 102(b) clock start?
Might want to excuse some general offers, because no commercial advantage (e.g., from cheaper concealed method) or information isn’t flowing
So at 2 or 3
Timeline:
1: General offer
2: Invents/RTP
3: Consummates offer
When does 102(b) clock start?
at 3
Timeline:
1: Specific offer
2: Invents/RTP
3: Consummation
When does 102(b) clock start? Why do people do this?
to fund cool stuff, like the stuff that NASA does; commissioning
What was City of Elizabeth?
someone said you have a 102(b) problem; court said no, because public use was an experiment (it’s MY public use, and MY experiment)
The patent infringement suit was brought by appellee, a patent holder for a type of wooden pavement, against appellants, a city, an individual, and a corporation. Appellant city contracted with appellant corporation to construct wooden pavements but claimed that what was constructed did not infringe on appellee’s patent. The Court also found that appellee’s experimental use of his pavement prior to obtaining a patent did not constitute public use within the meaning of patent law.
Why would I say “that was an experiment!”?
it’s an answer to a 102(b) statutory bar, and a 102(a) public use
What was Baxter?
two guys at NIH - Saudeau and Ito; Ito gives Saudeau his invented centrifuge to use in an unsecured laboratory
Baxter says what they were doing is experimental, and so shouldn’t be public use; court says no it wasn’t experimental because Saudeau was just tinkering with it for his own particular use and it was a public use since the area was unsecured, so bar is raised
Plaintiffs had a patent for a sealless centrifuge that was used to separate blood into its components and sued defendants for infringement. Defendants alleged prior public use that involved two research scientists at the National Institutes of Health (NIH), who were not connected to the inventor named by plaintiffs’ patent. Before the critical date, a research scientist had centrifuge built at NIH and determined that it worked properly for its original purpose, as a separator of blood into its components. The scientist also tested the centrifuge’s suitability for his own purposes. Plaintiffs argued that purported public use was negated by fact that it was experimental use. The court held that public testing before the critical date by a third party for his own unique purposes of invention previously reduced to practice and obtained from someone other than a patentee, when such testing was independent of and not controlled by patentee, was an invalidating public use, not experimental use.
Can I make an experimental sale?
yes, b/c sometimes you need to raise some capital as part of your experimental process (happened in Pfaff and City of Elizabeth), but better really be experimental and not be cheating the patent term
What were the four versions of “public use/experiment” and what are the corresponding cases?
- City of Elizabeth: don’t use MY experiment against ME
- Baxter: you can use his public use/non-experiment against me
- Metallizing: if i sell (secretly or not) the non-informing output of my clever idea, but not my clever idea, bar is raised
- Gore: if he tries to sell (secret or not) the non-informing output of my clever idea, bar isn’t raised
- Other: if he tries to sell my secret product, bar is raised
What qualifies as an experiment?
has to be something that goes toward what you’re patenting; not towards marketing what you’re patenting
What was Metallizing?
applying metal to things to make a metal like surface on it; wanted to patent the process; sells the end product
should be: has commercial advantage outside the patent term
court said: you’re cheating; raise the bar
The district judge found that plaintiff inventor’s main purpose in his use of his process more than one year before the date of application was secret, and for that reason its predominantly commercial character was prevented from invalidating the patent. The reviewing court overruled the case relied on by the lower court in reaching its decision. The court held that, if plaintiff went beyond the period of probation, he forfeited his right regardless of how little the public may have learned about his invention. Plaintiff could continue for more than a year to practice his invention for his private purposes of his own enjoyment, and later patent it. But that was not an exception to the doctrine, for he was not then making use of his secret to gain a competitive advantage over others, and did not thereby extend the period of his monopoly.
What are the factors in Pfaff? (don’t memorize)
- How many prototypes
- How long were you testing
- Records during testing
- Confidentiality
- Commercial advantage of a sale
- Inventor’s control over the experiment (less control, less of an experiment)
- Tinkering boat example, because boat went off out of his control
- Whether the experiment is tailored to the ultimately claimed features
- Could you have done the testing more quietly - modern view (contrary to what City of Elizabeth said)
What is the proxy for the on sale bar?
you are cheating
Metallizing: you’re cheating
City of Elizabeth: not cheating
Moleculon: not cheating
Gore: not cheating
What if someone else tries to patent what I keep behind the curtain and only reveal the product?
harder case:
What is Gore?
pointing to Cropper to blow up Gore
letter into the US from Copper is an offer to sale, describes operation, and encloses a photo; would be a statutory bar to him, but to Gore? no
if somebody makes a secret offer to sale, don’t raise the 102(b) bar
Would Baxter have come out differently if Ito went for the patent?
Maybe
Was it public? Nah, just at the lab
Was it an experiment? Yeah, they are researchers! that’s what they do!
Shows some hostility of someone else using another’s invention
In 1990, you conceive of and reduce to practice a new widget. You keep your widget as a complete secret, enjoying it only in the comfort of your own home. You never sell the widget, nor do you let others see it. Any prior art ramifications? Policy?
Prior art ramifications:
102(a): Yes/No: risk that somebody else is going to do something
102(b): Yes/No: no offer to sell, but risk that somebody else is going to do something
102(g): Yes: possibility of ASC
Policy:
In 1990, you conceive of and reduce to practice a new mouse trap. You put your mouse trap on display at a local museum, and anyone skilled in the art could view the mouse trap and immediately understand its operative principles. Any prior art ramifications? Policy?
Prior art ramifications:
102(a): No, public display is a public use, but not by others before your conception
102(b): Yes, have one year from 1990 to file
102(g): No
Policy:
In 1990, you conceive of a new method for pasteurizing milk. You build a machine that implements your method, and you begin to sell milk produced by your process. Your milk is completely indistinguishable from milk produced the normal way. Any prior art ramifications? Policy?
Prior art ramifications:
102(a): No, not known or used by others before your conception
102(b): Yes, have one year from 1990 to file
102(g): No
Policy:
In 1990, you conceive of a new fuel engine for use in automobiles. You rebuild the engine of an old taxi cab and implement your new design. You then start driving your fuel-efficient taxi around Chicago, offering people rides. Your cab is more profitable than the average cab because your fuel costs are so low. Any prior art ramifications? Policy?
Prior art ramifications:
102(a): No: Like City of Elizabeth? experimentation is an answer to public use; can have some experimental sales; not RTP: no drawings and still experimenting
102(b): Yes, selling output to commercial advantage - fewer costs for fuel and he knows; No, too general of an offer
102(g): No, still experimenting
Policy:
In 1990, you conceive of a new fuel engine for use in automobiles. You rebuild the engine of an old taxi cab and implement your new design. You then start driving your fuel-efficient taxi around Chicago, offering people rides. Your cab is more profitable than the average cab because your fuel costs are so low. instead of driving your taxi you offer to sell it to your neighbor. You do not let the neighbor look at the engine and the neighbor ultimately decides not to purchase the vehicle. Any prior art ramifications? Policy?
Prior art ramifications:
102(a): Yes: can’t say it’s experimentation anymore
102(b): Yes, offer to sell, which has commercial advantage (because it’s priced to sale); No, general offer
102(g): No, may or may not just be selling to get capital
Policy:
In 1990, you invent a new mouse trap. Anyone skilled in the art who views this mouse trap will immediately understand its operative principles. In 1988, Edison invented the exact same mouse trap. Edison kept the mouse trap on the floor by his workbench but never commercialized or otherwise publicized his work. Any prior art ramifications? Policy?
Prior art ramifications:
102(a): No, because not public - National Tractor
102(b): No because no offer to sell
102(g): Yes, RTP before you, and conception and diligence before your conception, but he may have ASC
Policy:
In 1990, you invent a new mouse trap. Anyone skilled in the art who views this mouse trap will immediately understand its operative principles. In 1988, Edison invented the exact same mouse trap. Edison kept the mouse trap on the floor by his workbench but never commercialized or otherwise publicized his work. Instead of putting the mouse trap by his workbench, Edison puts the mouse trap out by the side of his house, hoping to catch mice before they enter his home. Any prior art ramifications? Policy?
Prior art ramifications:
102(a): Yes, may be a little more public - Rosaire (extreme view)
102(b): No because no offer to sell
102(g): Yes, RTP before you, and conception and diligence before your conception, but he may have ASC
Policy:
What are the two views of Rosaire?
- out picking up rocks in public (even though it doesn’t inform)
- lots of people in the industry that know and aren’t contracted from talking about it
In 1990, you invent the new automobile engine discussed earlier. In 1988, Edison invented that same engine, installed it in a taxi cab, and allowed his brother to earn a living by driving the enhanced cab. Any prior art ramifications? Policy?
Prior art ramifications:
102(a): No, looks more National Tractor than Rosaire - core idea is not really publicly accessible
102(b): No, like Gore, selling output of invention by third party (but if they came to patent, no)
102(g): Yes, RTP before you, and conception and diligence before your conception, but he may have ASC (but doesn’t look like it - maybe concealment)
Policy:
In 1990, you invent that mouse trap. In 1992, Edison invents the same mouse trap and puts it on display in a local museum. Any prior art ramifications? Policy?
Prior art ramifications: (didn’t go over in class)
102(a): No
102(b): 1 year from 1992 to file
102(g): conceived and was diligent before 1990, yes
Policy:
In 1990, you invent that mouse trap. In 1992, Edison invents the same mouse trap and in 1992 Edison offers to sell the trap to a neighbor. Edison refuses to let the neighbor see the trap, and ultimately the sale falls through. Any prior art ramifications? Policy?
Prior art ramifications: (didn’t go over in class)
102(a): No
102(b): Yes, 1 year from 1992 to file, might benefit from it commercially; no, too general of an offer
102(g): No
Policy:
In 1990, you invent that milk process. In 1992, Edison invents the same milk process and starts selling milk. Edison keeps the process under wraps, but the milk is sold nationwide. Any prior art ramifications? Policy?
Prior art ramifications: (didn’t go over in class)
102(a): No
102(b): No, like Gore
102(g): you need to be diligent and RTP
Policy:
In 1990, you invent that milk process. In 1988, Edison had invented it, too. Edison began selling milk made by his process in 1989. Edison kept his process under wraps at all times. Any prior art ramifications? Policy?
Prior art ramifications: (didn’t go over in class)
102(a): No, not public before your conception
102(b): No, like Gore
102(g): Yes, he RTP’ed first, and you didn’t conceive before him
Policy:
What is section 103 about?
obviousness
How does anticipation (102) relate to obviousness?
higher threshold than anticipation, might not be patentable even if it’s literally new; patent-free zone around things we already know
What’s the obviousness test?
look at the differences between the subject matter yet to patented and the prior art, and judge obviousness at the time the invention was made to a person having ordinary skill in the art
only judge the invention, not the process (may have been lucky and fallen into your invention)
What is one worry in the obviousness inquiry?
hindsight; some things look obvious in hindsight
What is the mental pile of references for the obviousness inquiry?
anything you can get in under 102, so long as it is an analogous art; so references that are really far removed can’t come in
can combine references and common sense to show obviousness
What does KSR say about the person skilled in the art?
that they have at least a little bit of creativity
How had the courts tried to solve the hindsight problem before KSR?
the TSM test - teaching suggestion motivation test: we’re going to make you show that there was a teaching, suggestion, or motivation in the prior art that would have made someone at the time combine the references
KSR says it’s more than just that test
What is “teaching away”?
a good piece of evidence to show that everyone else was going the other way - just like in the Bezos example - everyone else was saying more clicks, not one-click
What are the objective considerations that courts are interested in for obviousness?
Commercial success (answered by showing that your invention wasn’t the only reason for commercial success)
Copying - doesn’t always apply though: may not have copied; or you could say of course i copied: your thing wasn’t patentable
Existence of Licensees: better be for real money
Long felt need: answer to this might be to something else that has changed, e.g. FDA just wouldn’t approve any diet pills, but Obama changed the regulations so now they are approvable
Praise (that’s a breakthrough!) or skepticism (that’ll never work; totes not obvious)
Prior failures by others, especially my adversary
Prior failures by me, assuming I’m skilled in the art
What is the other line about obviousness, besides KSR and the words of 103?
Look for objective evidence to show that what you did wasn’t obvious
What was Lichtman’s idea for a new objective consideration for courts to look at in obviousness?
Independent invention is objective evidence of obviousness
answer:
- already covered under 102(g)
- lots of great inventions were independently invented around the same time (e.g., telephone) (answer: maybe when 50 people have the same invention, there should be a presumption that can be overwhelmed)
What is the timing of 103? What’s the bad part of this?
can apply obviousness analysis to 102(b) prior art (even though it’s probably contrary to statute) - so one year prior to filing
bad part: even stuff long after invention (if you conceived more than one year before filing, up until filing date) can be used to hurt you on obviousness
What happens if it’s rejected before 18 month publishing date?
then 102(e) isn’t triggered, but 102(g) problems may still be there
What is a novelty provision?
one with at least one critical date at invention
102(a): public use before invention
102(e): filed before invented
What is the best timeline in practice?
102(b), because it is fact; whereas, invention has to hammered out by a judge or jury
