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
