The Novelty Requirement II Class Notes: February 4, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

2/04/032Law 677 | Spring 2003 Today’s Agenda 1.Derivation {35 U.S.C. § 102(f)} 2.Priority & Secret Prior Art {35 U.S.C. § 102(g)}

2/04/033Law 677 | Spring 2003 Derivation 35 U.S.C. § 102(f) A person shall be entitled to a patent unless... (f) he did not himself invent the subject matter sought to be patented... This rule is the ‘derivation’ principle: you cannot patent an invention you derived from another.

2/04/034Law 677 | Spring 2003 Derivation Gambro Lundia v Baxter Healthcare (Fed. Cir. 1997) What are the two components of a finding of derivation? What is the standard for how much information must be communicated? Note: why require corroboration of conception? (What is the practical effect of the corroboration requirement on inventors’ testimony?) Is there any real difference between the communication standard used by the D.Ct. and the Gambro court? (What is it?) What happens if you prove prior conception by another, but the communication does not enable?

2/04/035Law 677 | Spring 2003 Derivation What is the policy behind the derivation rule? Contrast the rule with the Inventorship requirement. Consider the ‘bus’ hypothetical on p oCan you think of reasons we might want to allow the eavesdropper to get a patent on the invention? oWhat if the eavesdropper files a patent application for the invention? What happens to the true inventor?

2/04/036Law 677 | Spring 2003 Priority 35 U.S.C. § 102(g) A person shall be entitled to a patent unless... before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed (g)(1) during the course of an interference … another inventor involved therein establishes … that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, 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.

2/04/037Law 677 | Spring 2003 Priority Section 102(g) establishes the US system as a “first to invent” system. Virtually all of the rest of the world has a “first to file” system. Consider the relative merits of each system w/r/t.. Determining the ‘real’ inventor; Administrative difficulties; Incentives on the innovation process; Should we switch to first-to-file?

2/04/038Law 677 | Spring 2003 Priority The Basic Rule of Priority Rule Rule: First to reduce to practice = priority Exception A: Prior conception + diligence until reduction to practice. Exception B: The original inventor abandons, suppresses, or conceals her invention.

2/04/039Law 677 | Spring 2003 Priority Inventor A Inventor B Conception Jan. 1, 2001 Jan. 2, 2001 Reduction to Practice Jan. 3, 2001 Jan. 4, 2001 Filing Date Jan. 5, 2001 Jan. 4, 2001 Priority?

2/04/0310Law 677 | Spring 2003 Priority

2/04/0311Law 677 | Spring 2003 Priority: Issues Fiers v Revel (Fed.Cir. 1993) (Lourie) Note: conception is a question of law (court is free to review de novo on appeal)Note: conception is a question of law (court is free to review de novo on appeal) The court adopts a particularistic definition for conception of a chemical compound.The court adopts a particularistic definition for conception of a chemical compound. What is it? Why do you think Judge Lourie (PhD Chemist) adopts this definition? (Do you agree with him?) Should enablement be irrelevant to this issue, as the Court says?Should enablement be irrelevant to this issue, as the Court says?

2/04/0312Law 677 | Spring 2003 Priority: Issues Burroughs Wellcome v Barr Labs. (Fed. Cir. 1994) (Mayer) What is the real issue here? (Why?) What was Broder’s and Mitsuya’s contribution to AZT? Why is this insufficient for joint invention? When will conception and reduction to practice coincide? (Why?)

2/04/0313Law 677 | Spring 2003 Priority: Issues You conceive of an invention (cold fusion for producing electricity) on January 1, and begin testing to attempt to reduce to practice. a)On February 1, you determine the invention will work to produce electricity. b)On February 1, you determine the invention will not generate electricity without the addition of a new Compound X. What is your date of conception in Case (a)? Case (b)?

2/04/0314Law 677 | Spring 2003 Priority: Issues Reduction to Practice DSL Dynamic Sciences (Fed. Cir. 1991) Why was the testing sufficient to reduce the couplers to practice? What is the rule for showing reduction to practice? An embodiment actually worked for its intended purpose. Note: ‘actual’ versus ‘constructive’ RTP.

2/04/0315Law 677 | Spring 2003 Priority: Issues Abandonment, Suppression, Concealment Fujikawa v Wattanasin (Fed. Cir. 1996) (Clevenger) The question here is whether the 17/15 month delay between RTP and filing is “abandonment”. oWhy is ‘spurring’ disfavored by the law? oWhat kind of facts would be suggestive of suppression or concealment? Assume you abandon your invention. Can you later obtain a patent on it? (What is your date of conception/RTP?) oNote the problem of § 102(c).

2/04/0316Law 677 | Spring 2003 Next Class Obviousness Obviousness The Graham Framework