CLASS NINE: July 1, 2013 I. NOVELTY: a. 102: A person shall be entitled to a patent unlessi.

(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 the patent, ii. (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States PRIORITY: 102(g) a. (g)(1) during the course of an interference conducted under section 135 or section 291 (inter partes proceeding), another inventor involved therein establishes, to the extent permitted by section 104, that before such persons invention thereof of the invention was made by such other inventor and not abandoned, suppressed or concealed, or b. (ex parte prosecution/invalidity defense) (2) before such persons invention
thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. 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.

II.

c. In determining priority under this subsector there shall be considered d. CONCEPTION: i. The formation in the mind of the inventor of definite idea of a complete and operative invention as it is thereafter reduced to practice 1. A person of ordinary skill in the art could reduce to practice without under experimentation a. Reducing to practice: i. Actual: Building a model, making a drawing b. Constructive ii. Griffith v. Kanamaru: Conception of a way to cure diabetes but doesnt reduce it to practice until 1984 1. If Griffith unquestionably conceived first, why isnt that the end of the story? a. Reasonable diligence must be before a second filer files b. Reasonable diligence: i. Valid excuses as to why you could not file on time: 1. Need to develop a closely related invention to test the primary invention

2. Serious illness 3. Laboratory Burns down ii. Invalid excuses: 1. Extended vacation/hiatus from a particular problem 2. Insufficient money 3. Company relocates III. PRIORITY RULE 102(g) a. First inventor to conceive has priority as long as she is reasonably diligent in reducing her invention to practice and did not abandon, suppress or conceal her invention i. Alternatively b. The first inventor to reduce to practice has priority unless another inventor can prove prior conception and reasonable diligence in reducing to practice from before the others conception STATUTORY BARS 102(b) a. 102: A person shall be entitled to a patent unless --b. The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United states i. Grace Period from a year after filing 1. Before that grace period, no patent c. On-sale bar: i. Critical date One year prior to the filing of the application (anything before the critical date will validate the patent) anything after wont ii. Pfaff v. Wells Electronics, Inc.: An invention is barred under 102(b), if more than one year prior to the date of the application: 1. The invention is the subject of a commercial offer for sale, and 2. The invention is ready for patenting a. Ready for patenting: When it has been reduced to practice or described sufficiently to enable a persons skilled in the art to practice (aka, actually or constructively reduced to practice) 3. Why does Pfaff not get a patent? iii. Space Sys. Loral v. Lockhead: 1. Facts: Inventor testified at full trial that back when he told his boss that he had an idea to position satellites better, but wasnt quite sure how it was going to work 2. Boss went to partner for financial help 3. A bare unenabled conception is not enough to show that the invention is ready for patenting 4. How do we make sure that future patentees dont side step this requirement re: grace period by refusing to put their ideas on paper?

IV.

d. Public Use Under 102(b)

Informing Use Inventor Third Party X X Non-Informing Use X Egbert v. Lippman ? Secret Use (public use or sale of product made from secret process) X Metalizing Engg Co. v. Kenyon Bearing NO W.L. Gore v. Garlock

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e. In order to trigger an on-sale bar, you must sell (or offer for sale) the actual product or the drawings to the product f. Eggbret v. Litman: i. Facts: 1. The original patentee created springs for his soon to be wife 2. Public did not get the benefit of this invention ii. Analysis: 1. In order to constitute public use: it is not necessary that more than one article be used, or that it be used by the public 2. Instead the test is: a. Whether the inventor having made the device, gives or sells it to another without limitation or restriction or injunction of secrecy (gives it away or sells it, etc.) without any limitation of its use i. Thats true even if the device is not visible by the general public b. Reason why we have the public use bar: i. If it was viewed by the public: Court constitutes this as evidence that the patentee is not the inventor c. Justice Miller assumes that the woman is incapable of making a copy d. When you put products out there to the public without any limitations or restrictions e. Would this case turn out any differently if the parties were married? i. Whats public? f. Secret use by the inventor is a bar SUMMARY OF ABOVE: a. Under the old section of 102 (pre AIA), the first inventor can get a patent even if hes the second to file, if inventor shows diligence in reducing to practice between his 1st conception and ultimate reduction to practice b. Due diligence: i. Mere economic reasons for delay are not sufficient

VI.

ii. On the other hand, attempting to test the invention to make sure it work IS SUFFICIENT REASON FOR DELAY 1. Clarification: all that we ask for is that invention work 2. We are not going to give you time to make the invention perfect or even ready for the market, you get enough time for your conception to make sure the product works a. Can file a patent, then a patent for improvement iii. AIA abolished old system and now its first to file 102(a) iv. 102(b), 102(a) whereas applies to others 1. 102(b) bars: 2. Apply to inventors who dont make timely filing 3. Preventing a de facto patent extension 4. In order for challenger to invoke 102(b) bar: a. Must be an invention i. Actual (model or drawing); or ii. Constructive reduction to process 5. Offerings for sale, where allowing public use, prevents application a. Offer for sale: i. Offer to sell the actual invention v. 102(b) reasons: 1. Protect public by not allowing withdraw of use of public use 2. Prevent inventors from gaming the system of de facto inventions a. This dual purpose as a result, it doesnt matter who has done the prohibited activity b. Public has come to rely on it EXPERIMENTAL USE: Doctrine re: patents benefit to the public a. An inventor before filing application for invention can use it experimentally, but if experimentation is over a year, need to file for experimental use b. City of Elizabeth v. American Nicholson Pavement Co. i. Experiment had to last more than 1 year limit (5 years) ii. Once saw that it worked, he patented it iii. City of Elizabeths argument says that invention was in use for over a year since people were using it daily iv. Court says no, this was a typical experiment v. Factors are: 1. The cement was laid over 75 years, monitored it for several years, made a good faith effort to reduce invention to practice 2. Invention cannot feasibly be tested in private (must be used in public to make sure it works) 3. Due diligence 4. Under control of inventor

c. Lough v. Brunswick Corp.: i. Plaintiff invented seal assembly for leaking boats ii. Seal prevented leaking and corrosion iii. Plaintiff built a small portion (6) d. Re: Factors effecting Experimental Use: i. Number of prototypes and duration of the testing ii. Whether records or progress reports were made during testing iii. The existence of a secrecy agreement between the patentee and the party performing the testing iv. Whether the patentee received compensation for the use v. Extent of control the inventor maintained over the testing*** this is the key factor e. Inventor failed to satisfy most of these factors i. Didnt set any goals ii. Kept no reports of these experimental testing f. **Experimental use Argument: i. Used to defeat public use bar** 1. Cannot be used to defeat the On-Sale bar 2. Not a rejoinder to an on-sale bar a. Once youve decided to sell, you have started your 1 year clock ticking g. Testing the invention vs. testing market: i. Once invention is reduced to practice, experimental use ends 1. Although the experiment may end, cannot delay beyond the point which we allow you to collect the necessary data h. In Re Klopfenstein: i. What is necessary for a reference to be considered a publication ii. Facts: 1. Patent application filed in 2000 2. For patentees in 1998, P and colleagues made a slide presentation to describe their invention 3. No prohibition on note taking during conference 4. PTO says theyre outside 1 year grace period since their invention was described in a publication and barred a. Argument: PowerPoint presentation is not transitory and should not be barred iii. Issue: what counts as printed publication iv. Analysis 1. Whether it was has been disseminated, distributed to the public, or sufficiently available to the public interested in art: **can a member of the public interested in this general sufficiently accessible to go out in the public and find it? a. I.E. a thesis published and catalogued by last name does not qualify because it is not arranged by its topic b. A person of ordinary skill in the art (POSITA)

c. A presumption of a POSITA, knowing about, and has read every single publication on that topic, no matter where it is indexed, has read it. i. If it were organized by last name, the POSITA would not know its subject matter and therefore this parallels Plaintiffs argument re: powerpoint d. On the other hand, paper indexed by topic, in a single foreign language and library does qualify as a printed publication, a POSITA would be able to find it e. Even a paper delivered orally would count if copies of the paper were distributed to the attendees at a conference f. But absent copies dont count because it has to be of printed publication g. Purpose of this rule is about protecting the public h. Length of time display was exhibited i. More transient the display exhibited j. Expertise of the target audience (how easy to retain the information) more expert, less explanations needed k. Easement of the material that would be copied l. Suppose this presentation was made to a class of undergraduate students i. Students expertise do not equate to the POSITA regarded by the Courts analysis m. Public Accessibility**: the key to figuring out whether it is publicly accessible. But it is hypothetical i. Indexed? ii. In what sense must it be printed? 1. Powerpoint 2. One Copy distributed to conference organizers plus oral presentation 3. Oral Presentation recorded and MP3 file available on a website? i. Bruckelmeyer case: Drawings not made public, but had they been made public did not disclose i. Majority says: 1. POSITA, would have seen the summary, called the PTO, and discovered drawings and applications 2. Nothing in the patent suggested that these drawings were out there

j. In early 1990s whether material printed online of the FDP Server counts as printed publication i. SRI National: FDP Server: (predecessor to www.) ii. Court says this is a Jury question: 1. Fact intensive question for POSITA to go out and look for it 2. This question has become somewhat mooted VII. SUMMARY: a. AIA Update: i. Gone in effect March 16, 2013 ii. First To File Or Disclose: 1. First to file wins, except where: a. Second filer was first to publicly disclose the invention (most important exception); b. The first filer obtained the invention, directly or indirectly, from the second filer (to be determined in derivation proceedings: --the heir to old interferences); or c. The first filer abandons the application prior to publication or issuance. b. New102(a) NOVELTY; Prior Art: a person shall be entitled to a patent unless: i. (1) ii. (2) c. New 102(b) EXCEPTIONS: i. (1) d. First to File: Exceptions/Grace Period Prior Art in 102(a) 102(a)(1) Printed 102(a)(2) 1st filed US patent publications, public uses, application by another etc. Exceptions in 102(b) 102(b)(1) (limited to 1 year only!) (A) Any disclosure: coming from the applicant directly or indirectly B disclosures by others made after public disclosure by the applicant