3 rd party statutory bar activity Patent Law

Cleanup issues Experimental use and reduction to practice

Chisum on Patents

Chisum on experimental use The better and prevailing view is that experimental use can indeed continue even after the invention has been completed and reduced to practice as that term is used in patent law. Unfortunately, many Federal Circuit decisions articulate the former, less- preferred position, to wit, that experimental use cannot extend beyond reduction to practice. This leads to considerable confusion.

§ 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 [etc]… 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....

Many references are BOTH 102(a) and 102(b) prior art Examiners will usually cite a reference as a 102(b) reference – because the inventor cannot leapfrog backward by showing earlier invention No “swearing behind” 102(b) references

Back to the “Critical Date” One year before filing

Inventor’s own acts Filing Deadline (acts + 1 year)

Inventor’s own acts Filing Deadline (acts + 1 year) 3 rd party acts

One year before filing 3 rd party acts

When would a statutory bar invalidate, but not 102(a)?

When [1] a qualifying reference enters the prior art [2] after the applicant’s date of invention, but [3] more than 1 year prior to applicant’s filing date When would a statutory bar invalidate, but not 102(a)?

One year before filing 3 rd party acts Filing

One year before filing 3 rd party acts Filing

Statutory Bars and 3 rd party activity Are the same policies implicated? Yes and no – –“Hurry up and file” – yes –Grace period – you have 1 year - NO

Practicalities Some 3 rd party prior art may be difficult/expensive to find –Rarely during prosecution –Labor-intensive discovery On sale, some public use; compare to “known or used [publicly]” under 102(a)

Novelty and the economics of search Page 417 How did defendants find out about prior art in Baxter and WL Gore? –Interference, Baxter –Public use (?) by Budd, WL Gore

Baxter What category of section 102 prior art is at issue here?

Baxter : Cullis Critical Date Cullis Invention Date Filing Date:

Baxter Suaudeau and Ito public (?) use activity : Cullis Critical Date Cullis Invention Date Filing

WL Gore v. Garlock Cropper on sale/in public use activity Gore Critical Date Gore Invention Date

Baxter timeline Suaudeau and Ito build centrifuge at NIH : Cullis Critical Date : Cullis Files Pat App

Issues on appeal Was Suaudeau & Ito’s use “public”? Was it “experimental” – not yet completed? –Different standards for 3 rd party experimentation, vs inventor’s own experimentation?

Holding “Suaudeau’s use was public, and it was not experimental in a manner that saves Cullis’ patent.” -- p. 572

Hypothetical Q: Inventor conceives of a new widget on 1/1/2000. Thief steals the plans, builds the widget and, unknown to the inventor, sells a copy on 2/1/2000. The inventor meanwhile sells some prototypes to determine if the new widget works. She requires customers to report on the performance of the invention. The inventor is satisfied with the tests on 3/1/2001 and then files an application. Can she get a patent?

Hypothetical A: Probably not. Sales by thieves do start the one-year clock of 102(b) running. Evans Cooling Sys. v. General Motors Corp., 125 F.3d 1448 (Fed. Cir. 1997). Here the inventor’s own sales were probably experimental, but the thief’s was not. Perhaps, however, the inventor could argue that the invention was not yet “ready for patenting” at the time of the thief’s sale.

Baxter: Newman dissent Opposes “secret prior art” –See Pitlick p rd party 102(b) art should be narrowly limited –“liberal” test of publicness Consistent with policies?

WL Gore v Garlock

W. L. Gore & Assoc. v. Garlock, Inc. 1966: John Cropper of New Zealand develops a machine for producing stretched and unstretched PTFE thread seal tape. 1967: Cropper sends a letter to a company in Massachusetts offering to sell his machine, describing its operation, and enclosing a photo. Nothing comes of that letter. “There is no evidence and no finding that the present inventions thereby became known or used in this country.”

Gore 1968: Cropper sells his machine to Budd in US but requires Budd to keep the operation of the machine a secret, which Budd does. Budd uses the machine to produce seal tape. May 21, 1970: Gore files a patent application on a process for stretching PTFE material that is similar to Cropper’s process.

W. L. Gore & Assoc. v. Garlock, Inc. Q: Why doesn’t Gore have a novelty problem? A: The process wasn’t publicly known, so it doesn’t qualify under 102(a). There’s no 102(e) issue. Cropper’s process could not be considered under 102(g)(2) because Cropper was concealing/suppressing the process; and also not invented “in the US”.

Gore Q: Why isn’t Cropper’s 1967 letter an offer to sell? A: Probably because he was not offering to sell the process, only the machine. Moreover, as we know from his later activity with Budd, the sale of the machine would have been subject to a secrecy restriction. Q: Why isn’t Budd’s use of the machine a bar? A: Budd’s use of the machine is not a “public” use of the process because he kept the process secret.

Q: Could Cropper have applied for a U.S. patent in 1970? A: No!!! “[A]n inventor’s own prior commercial use, albeit kept secret, may constitute a public use or sale under § 102(b), barring him from obtaining a patent.” Woodland Trust v. Flowertree Nursery, 148 F.3d 1368, (Fed. Cir. 1998). Also Pennock supports this rule.

Is “3 rd party” 102(b) art different from “first party” art? “If Budd offered and sold anything, it was only tape, not whatever process was used in producing it. Neither party contends, and there was no evidence, that the public could learn the claimed process by examining the tape. If Budd and Cropper commercialized the tape, that could result in a forfeiture of a patent granted them for their process on an application filed by them more than a year later.”

See Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 68 USPQ 54 (2d Cir.1946). There is no reason or statutory basis, however, on which Budd's and Cropper's secret commercialization of a process, if established, could be held a bar to the grant of a patent to Gore on that process.

This court found the Gore third party could not both elect to avoid the patent system and still invoke that system to erect a third- party public use bar to an inventor who disclosed the invention for patenting. Thus, the secret activity in Gore did not constitute public use. -- Eolas Technologies Inc. v. Microsoft Corp. 399 F.3d 1325, (Fed.Cir.2005).

Exp use in 3 rd party cases?? “Suaudeau’s use was public, and it was not experimental in a manner that saves Cullis’ patent.” -- p. 572

Some bizarre twists Usually, a patentee argues in favor of experimental use to qualify for an exception to the statutory bar In cases such as Baxter, patentee argues that a third party was experimenting, so no statutory bar