1. Loss of Right Provisions
Class Notes: January 28, 2003
Law 677 | Patent Law | Spring 2003
Professor Wagner

2. Today’s Agenda Wrap up Inventorship Loss of Right Provisions
Prior Public Use
Experimental Use
On-Sale Bar
Third-Party Activity
1/28/03
Law 677 | Spring 2003

3. Inventorship 35 U.S.C. § 116. - Inventors
When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though
(1) they did not physically work together or at the same time,
(2) each did not make the same type or amount of contribution, or
(3) each did not make a contribution to the subject matter of every claim of the patent.
1/28/03
Law 677 | Spring 2003

4. Inventorship
Hypo: Patent ‘123 has 120 claims. A is the sole worker on 119 claims; B suggests an improvement that makes it as Claim 120.
Who owns the patent?
B grants an exclusive license to Company X to the ‘123 patent, and keeps the $$ for herself. Problem?
1/28/03
Law 677 | Spring 2003

5. Inventorship Hypo 2: Patent ‘123 was filed without naming Inventor B.
What needs to happen? How does it work?
35 USC 116 (PTO can fix); 35 USC 256 (Court can fix)
Company X, charged with infringement, gets a license from B. What happens? See Ethicon, p. 486.
Assume A deliberately filed without B’s knowledge. What happens?
35 USC 116/256:
… whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Commissioner may permit the application to be amended accordingly, under such terms as he prescribes.
1/28/03
Law 677 | Spring 2003

6. The Standards for Patentability
A valid patent must be . . .
Fully and appropriately described (§ 112)
In compliance with statutory bars (§ 102)
Novel (§ 102)
Nonobvious (§ 103)
The work of the inventors (§ 116)
Useful (§ 101)
Within the appropriate subject matter (§ 101)
1/28/03
Law 677 | Spring 2003

7. Prior Public Use 35 U.S.C. § 102. - Conditions for patentability;
novelty and loss of right to patent
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 for patent in the United States . . .
1/28/03
Law 677 | Spring 2003

8. Prior Public Use Egbert v Lippmann (1882)
First step: find the “critical date”
Filing date: July 17, 1866
Critical date: July 17, 1864 (note: two years then)
Next, determine whether use was “public”
How many articles must be used?
How many persons must be “in the know”?
What if the invention is “hidden”?
What point does the dissent make about the meaning of “public”? (Why is this linked to the goal of the “prior public use” bar?)
1/28/03
Law 677 | Spring 2003

9. Prior Public Use Metallizing Engineering Co. (2nd Cir. 1946)
Find the critical date.
August 6, 1941
Key question: are these “public” uses?
Machine kept secret, output sold freely
Third person (not inventor) used machine secretly, sold output
Inventor constructed models, played around with them, showed them to visitors/friends
Note the distinction:
Inventor’s attempt to extend commercial life of patent (public use bar)
Whether the invention is really “new” (anticipation analysis)
When is a prior use not “public”?
No commercial exploitation
Private / under the inventor’s control
Experimental
1/28/03
Law 677 | Spring 2003

10. Experimental Use City of Elizabeth (1878)
Why not a prior public use? (Aren’t the components present?)
What factors lead the court to believe the use is experimental?
Lough v Brunswick (Fed. Cir. 1996) (Lourie)
What factors lead the court to believe the use is not experimental? (Note the dissent’s response.)
Procedural note: What did the jury decide? Implications?
Bottom line:
What are the “minimal indicia”?
Who bears the burden of proof?
1/28/03
Law 677 | Spring 2003

11. On Sale Bar 35 U.S.C. § 102. - Conditions for patentability;
novelty and loss of right to patent
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 for patent in the United States . . .
1/28/03
Law 677 | Spring 2003

12. On Sale Bar Pfaff v Wells (1998)
Key: what state of the invention will trigger an on-sale bar?
1/28/03
Law 677 | Spring 2003

13. On Sale Bar Pfaff (continued)
What is required to show “ready for patenting”?
Drawings or descriptions
Sufficient to enable
How is this different than “conception”?
Can you avoid the on sale bar with a claim of experimental use?
What is an “offer for sale”? What must be offered?
Bottom Line: to trigger an on sale bar
Activity prior to critical date
Commercial offer for sale of the invention
Invention must be ‘ready for patenting’ at time of offer
1/28/03
Law 677 | Spring 2003

14. Third-Party Activity Lorenz v Colgate-Palmolive (3rd Cir. 1948)
Does the prior public use bar allow for exceptions in the case of fraud or other bad behavior?
Baxter Int’l v COBE labs (Fed. Cir. 1996) (Lourie)
What if a 3rd party reduces the invention to practice / uses it?
In Baxter, wasn’t S’s use “experimental”? Why not? (How do you tell whether a use is “experimental”?)
Note: 3rd party prior use (even ‘secret’) applies to the on sale bar as well.
1/28/03
Law 677 | Spring 2003

15. The Novelty Requirement I
Next Class
[ Monday, February 3, 1:30-2:50 ]
The Novelty Requirement I
The Date of Invention
Anticipation
"Known or Used"
"Patented or Described in a Printed Publication"
Secret Prior Art
1/28/03
Law 677 | Spring 2003