Intellectual Property Boston College Law School February 16, 2009 Patent – Novelty

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

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 ….”

On-Sale bar Policies –Don’t remove inventions from public domain –Encourage timely disclosure of inventions –Avoid extension of patent term –Provide some breathing space to inventors to assess patentability, marketability, success, etc.

Priority 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. In determining priority of invention 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.”

Priority Conception Reduction to Practice Conception Reduction to Practice Reduction to Practice Conception Reasonable Diligence

Griffith v. Kanamaru Conception Jun. 30, 1981 Reduction to Practice Jan. 11, 1984 Reasonable Diligence Filed Nov. 17, 1982 Griffith Kanamaru

Priority Questions –Why reward conception? –Why reward invention (as opposed to filing)? –Why a winner-take all system?

GATT-TRIPS Changes Modifications to U.S. Patent Law –Term: 20 years from application –Introduction of foreign pre-filing activity –Provisional patent applications

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

Nonobviousness 35 U.S.C. § 103. Conditions for patentability; non-obvious subject matter. –“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains …”

Chisel Plow

Graham v. John Deere

Nonobviousness Factors in the analysis –(1) Scope and content of prior art –(2) Differences between invention and prior art –(3) Level of ordinary skill in the art –(4) “Secondary considerations” Commercial success Long-felt but unsolved needs Failure of others to invent Copying by others

Administrative Next Class –Finish IV.B.4 – Nonobviousness –Read IV.B.5 – Enablement