Novelty Beyond 102a

1
Novelty Beyond 102(a)

• Patent Law
• Prof Merges
• 9.16.08

2
Agenda

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

3
(No Transcript)
4
Why would anyone disclose but not claim an
invention?
5
Why would anyone disclose but not claim an
invention?

• Related field
• Interested only in one application
• Oversight

6
Holmes reasoning

• Note emphasis on who was prior inventor
• Is that how we would view it today?

7
Holmes reasoning

• Note emphasis on who was prior inventor
• Is that how we would view it today?
• NO! Two separate issues
• Is Whitfords patent anticipated by Clifford
  reference?
• VS. Who has priority

8
What would make this a priority case?
9
What would make this a priority case?

• Whitford and Clifford would have to CLAIM the
  same subject matter!

10
Alexander Milburn

• 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

11
Back to Holmes . . .

• Plain meaning approach
• Good starting point
• Followed Here?

12
Back to Holmes . . .

• Plain meaning approach
• Good starting point
• Followed Here?
• Why Not?

13
First to Invent An Absolute Patent Law Principle?

• Completely secret descriptions
• Abandoned applications
• Foreign known or used references

14
The Publication Analogy

• Shows strength of first inventor policy
• Worldwide, absolute
• Subject to exceptions, this is the top policy
  consideration

15

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

16

• Clifford had done all he could do to make
  description public
• Mailbox rule for disclosure purposes?

17

• 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

18
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

19
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

20
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

21
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.

22
MPEP 706.02(f) (contd)

• 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.

23
Overcoming 102(e) rejection

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

24
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 . . . .

25
102(e) amendments

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

26
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
• Assumed to trigger 102(e)

27
Agenda

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

28
102(f) The (f) is for Fraud
29
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

30
Campbell Invention
31
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)

32
Typical derivation scenario

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

33
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.

34

• 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

35
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.

36

• 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.3d 1363, 1376 (Fed.Cir.2004).

37
Transocean Offshore Deepwater Drilling, Inc. v.
GlobalSantaFe Corp.434 F.Supp.2d 836 (SD Tex
2006)

• Genuine issue of material fact existed as to
  whether facsimile, 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).

38
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.3d 1344, 1349
  (Fed.Cir.1998).
• -- at 1349.

39

• However, "if 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.