Novelty and Statutory Bars Intro to IP Prof Merges –

Novelty § 102 A person is not entitled to a patent if the invention was: in the prior art (as defined by § 102 (a), (e), (g)) barred under § 102 (b), (c), (d)

Base, with passageway U-shaped bar Cutting element attached to bar Rotating handle at end of bar CLAIM 1: ELEMENTS

Cheese Industry Today New Trends in Slicers by J. Smith Sample Publication ________________ New innovations _______________________________ ______________various round, and____. ______________ _______ Exciting : stainless steel blades,, ___________ ________ ____________________. The wire slides into a convenient For tightened wire designs, cutting bar shapes: U-shaped, new cutting elements tightened wire attached to the bar passageway in the base. tightening can be achieved by rotating the handle.

Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________ ______________various round, and____. ______________ _______ Exciting : stainless steel blades,, ___________ ________ ____________________. The wire slides into a convenient For tightened wire designs, cutting bar shapes: U-shaped, new cutting elements tightened wire attached to the bar passageway in the base. tightening can be achieved by rotating the handle. Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar NOVELTY REQUIREMENT NOT MET: NO PATENT GRANTED Claim ElementsClaim Elements in Publication

Cheese Industry Today New Trends in Slicers by J. Smith Sample Publication: Revised ________________ New innovations _______________________________ ______________various round, and____. ______________ _______ Exciting : stainless steel blades,, ___________ ________ ____________________. The wire slides into a convenient cutting bar shapes: U-shaped, new cutting elements tightened wire attached to the bar passageway in the base.

Invention Compared with Prior Art Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Smith Article Jones Patent Adams Slicer XX XX XX INVENTION NOT ANTICIPATED NOVELTY REQT MET: PATENT GRANTED X

Novelty (Anticipation) [§ 102(a)] Versus Statutory Bars [§ 102(b)] Novelty/Anticipation concerned with NEWNESS – is it original to the patent applicant/patentee? Statutory Bars concerned with TIMELINESS – did the inventor file soon enough?

Critical Concept: the “Critical Date” The Invention Date

Critical Concept: the “Critical Date” The Invention Date The Prior Art

Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART The Invention Date The Prior Art

Conception: Summer 1886 Reduction to practice: 7/12/1886 Novelty Critical Date Example Filed: 6/7/1889 Unpacking the “invention date”

Rosaire v. Baroid

Palestine, Texas

Horvitz publications Horvitz, L., On Geochemical Prospecting. Geophysics, V. 4, No. 3, pp Horvitz, L., Recent Developments in Geochemical Prospecting for Petroleum. Geophysics, V. 10, pp Horvitz, L., Chemical Methods. In: J.J. Jakosky (Editor), Exploration Geophysics (2d ed.). Trija Publishing, Los Angeles, pp Horvitz, L., Hydrocarbon Geochemical Prospecting After Thirty YearsHorvitz, L., Vegetation and Geochemical Prospecting for Petroleum. AAPG Bull., V. 56, pp Horvitz, L., Near-surface Hydrocarbons and Non- hydrocarbon Gases in Petroleum Exploration. Presented at: Asso. Petrol. Geochem. Explor. AAPG Rocky Mountain Section, Denver, Colo., June, 1985.

Rosaire v Baroid Section 102(a): 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 by the applicant for patent.

(a)The invention was known or used by others in this country -Note the national limitation here -What does it mean to be “known or used”? -Why was Teplitz team’s use not enough by itself to anticipate?

Rosaire (cont’d) Rosaire’s argument – –Top of p. 404 Court’s response --

Rosaire v Baroid With respect to the argument advanced by appellant that the lack of publication of Teplitz's work deprived an alleged infringer of the defense of prior use, we find no case which constrains us to hold that where such work was done openly and in the ordinary course of the activities of the employer, a large producing company in the oil industry, the statute is to be so modified by construction as to require some affirmative act to bring the work to the attention of the public at large.

In re Hall Section 102(b) case –But: same standard for “publication” under 102(a) and 102(b) –See Rosaire case Reissue patent application –“Protest” during reissue

Foldi Thesis -- Freiburg

Freiburg

Evidence of “publicness” Index cataloguing Open to public

Novelty vs. statutory bars Novelty: who was first? (Measured from date of invention) Statutory bar: did you file on time? (Measured from date of filing)

§ 102. Novelty and loss of right to patent 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 by the applicant for patent, or (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, or....

§ 102. Novelty and loss of right to patent A person shall be entitled to a patent unless (a) the invention was known or used by others … before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication …, more than one year prior to the date of the application for patent in the United States, or....

Statutory bars v. novelty –102(a) – Novelty; 102(b) – Statutory bars –Different as to (1) who may create prior art; (2) the categories of prior art; and (3) the critical date for determining prior art

Critical Concept: the “Critical Date” The Invention Date

Critical Concept: the “Critical Date” The Invention Date The Prior Art

Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART The Invention Date The Prior Art

Statutory Bar Dates One Year Grace Period Dec. 20, 1996 Patent Application Jones Oct Dec. 19, 1995 Jones Dec. 19, 1996 Section 102(b) BarOne Day Gap

Statutory Bars § 102(b), (c), (d) An inventor loses the right to patent if, more than one year prior to the applicant’s filing, the invention was: patented by another anywhere patented by the applicant in a foreign country-- § d described in a printed publication anywhere in public use in the US on sale in the US (strict identity not required)

Egbert v. Lippmann Statutory bars v. novelty –102(a) – Novelty; 102(b) – Statutory bars –Different as to (1) who may create prior art; (2) the categories of prior art; and (3) the critical date for determining prior art

Egbert v. Lippmann Why not a novelty case? What are the essential facts: use a timeline

Corset Springs

Egbert (cont’d) Conception, Jan – May 1855 R to P: May, 1855 (?) 1858: Second pair of springs Patent app filed: March 1866

Egbert Only 1 used – enough? “Non-informing public use” –Why enough to constitute a bar?

Conclusion “The inventor slept on his rights for 11 years...” –

Samuel F. Miller, on Court

Miller Dissent ‘‘It may well be imagined that a prohibition to the party so permitted [to use the springs] against her use of the steel spring to public observation, would have been supposed to be a piece of irony.’’ 104 U.S. (14 Otto), at 339.