Intellectual Property Boston College Law School February 27, 2008 Patent - Enablement

Requirements (1) Patentable Subject Matter (2) Novelty (3) Utility (4) Nonobviousness (5) Enablement

Edison Sawyer & Man claim –(1) An incandescing conductor for an electric lamp, of carbonized fibrous or textile material …

Enablement 35 U.S.C. § 112. Enablement –“The specification shall contain a written description of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms, as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Gentry Gallery v. Berkline A sectional sofa comprising: … –a pair of reclining seats disposed in parallel … –a fixed console disposed in the double reclining seat section between the pair of reclining seats … –and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section

Berkline Sofa

Enablement Written Description Best Mode

Novelty 35 U.S.C. § 102. Novelty. –“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 … (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 … (e) the invention was described in a patent granted on an application for patent by another filed … before the invention … (f) he did not himself invent the subject matter … (g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it ….”

Novelty - § 102 InventedPatent Filed (a) Novelty - known (US), used (US), patented, described (e) Previously Filed - described in a filed US patent application (b) Statutory Bar - patented, described, in public use (US), on sale (US) One year (g) Previously Invented - made in US by one who did not abandon or conceal

Novelty 35 U.S.C. § 102. Novelty. –“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 …

Novelty 35 U.S.C. § 102. Novelty. –“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 …

Novelty 35 U.S.C. § 102. Novelty. –“A person shall be entitled to a patent unless - (e) the invention was described in a patent granted on an application for patent by another filed … before the invention … (f) he did not himself invent the subject matter …

Novelty 35 U.S.C. § 102. Novelty. –“A person shall be entitled to a patent unless - (g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it ….”

Administrative Next Assignment –Finish IV.B.4 – Novelty