1. Novelty: What’s New? Plenty! Patent Law Prof Merges 9.20.2011

2. Patent Reform is now the Law!

3. This ought to give Merges something to work on for awhile!

4. First to File Priority: Leahy-Smith America Invents Act of 2011 Affects three primary areas of patent law: – Priority of invention/novelty – Priority contests – end of interferences – Grace period: effect of inventor pre-filing activities (inventor or third party) on patent validity

5. Novelty The prior art will now consist of all publicly available material, without geographic restriction, dated earlier than the patent filing date No more “swearing behind” prior art based on patentee’s inventive activities – Goodbye conception, reduction to practice, diligence, and Rule 131. – Goodbye categories of “domestic-only” prior art.

6. New Section 102 § 102. Conditions for patentability; novelty ‘‘(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— ‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; (2) [invention described in prior-filed patent applications that result in issued patents or published applications – analogous to old 102(e)]

7. Exception: Grace Period (b) EXCEPTIONS.— (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

8. Requirements for Grace Period (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who [derived from the inventor] [Note: New 102(b)(1)(B) allows an inventor to remove prior art created by another if the inventor published earlier than the other.]

9. Priority of invention First applicant to file now wins, usually. Exceptions are (i) where second filer was first to publicly disclose the invention within the 1-year pre-filing grace period; or (ii) where first actual filer derived invention from another. Second exception determined by a “derivation proceeding” – the heir to interferences under the old law.

10. Grace Period The new law does permit a limited grace period that exempts from the prior art both (i) the inventor’s own “disclosures”; and (ii) other parties’ “disclosures” that occur after the inventor’s disclosure. Grace period gives 1 year from date of activity to allow time to file. But the scope of the grace period is unclear based on the wording of the Act.

11. Grace period (cont’d) Some argue that certain prior art events (e.g., prior public uses) by inventor do not qualify for the grace period because such an event isn’t a “disclosure” under the new Act This is incorrect. The new Act is quite clear in defining an inventor’s own “disclosure” very broadly – thus, the inventor’s own on sale or non-informing public use events DO qualify for the grace period

12. For inventor, “disclosure” includes on-sale and (non-informing) public use events The statute specifically distinguishes between “disclosure” and “PUBLIC disclosure” – Compare sec. 102(b)(1) [“DISCLOSURES MADE 1 YEAR OR LESS BEFORE EFFECTIVE FILING DATE”] with sec. 102(b)(1)(B) “…the subject matter disclosed had … been publicly disclosed …” – Some definitions of “disclose” refer to something less than widespread dissemination; e.g., Oxford Eng. Dict, def. 4 (“open to one’s own knowledge”)

13. New Act perpetuates current rule in distinguishing prior art events initiated by inventor and those of 3 rd parties ANY disclosure by inventor him or herself – including confidential on-sale activities and non-informing public uses – initiates a 1-year grace period – Inventor has 1 year within which to file after on- sale or public use event

14. Under the statute A’s on-sale activity or non-informing public use creates a grace period FOR A but DOES NOT bar a patent for others such as B – Why not? Because it is prior art ONLY TO A under 102(a)(1), and therefore a “disclosure” under 102(b)(2) which qualifies for the 1 year grace period Also: As under current law, confidential third party on-sale and non-informing public use activities by third party B do NOT create prior art for patent applicant A

15. 5 Step Analysis 1.Novelty rule, 102(a)(1), is keyed to the filing date. Categories of prior art include “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” 2.Grace period in 102(b)(1) is an exception to the novelty rule of 102(a)(1) 3.102(b)(1) uses generic word “disclosure” to refer to all categories of prior art under novelty rule, 102(a)(1) 4.Prior art categories under 102(a)(1) incorporate existing law defining each category

16. 5 Step Analysis (cont’d) 5. Existing law distinguishes between first- and third-party events for purposes of the on sale and “public use” categories in 102(a)(1)

17. Prior art non-informing public use Under current law, A’s non-informing public use for more than a year bars A from getting a patent – Metallizing Engineering But this does not bar a third party, B, from getting a patent

18. AIA uses term “disclose” in very broad sense “[Grace period] will apply to all actions by the patent owner during the year prior to filing that would otherwise create § 102(a) prior art.” House Cmte Rep. 112-98 at 43. “Applicants’ own publication or disclosure that occurs within 1 year prior to filing will not act as prior art against their applications.”(Suggesting that diclosure is different from publication.) Id., at 42.

19. More legislative history “New section 102(b) preserves the grace period, ensuring that during the year prior to filing, an invention will not be rendered unpatentable based on any of the inventor’s own disclosures, or any disclosure made by any party after the inventor has disclosed his invention to the public.” – Cmte Rep. 112-98, at p. 73.

20. Grace Period and Novelty If A begins confidential on-sale, or non- informing public use, activity, A has 1 year in which to file BUT: If thereafter B PUBLICLY DISCLOSES before A files his or her patent application, then A’s patent is barred Prior “public disclosure” (not just any disclosure) by A is required to protect A against B’s subsequent public disclosure

21. Statute: “disclosure” vs. “public disclosure” “Disclosure” in the grace period provision, 102(b)(2), incorporates all categories of prior art listed in 102(a) This is distinct from the term “PUBLIC disclosure” in 102(b)(2) Therefore, not all disclosures are public disclosures

22. Statutory language 102(b)(1): “A disclosure made 1 year or less before [filing] … shall not be prior art if – (A) The disclosure was made by the inventor … ; OR (B) … the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor …

23. Hypothetical 1 Baker publishes in Science magazine, on June 1, material claimed by Able in application filed on June 30. Able’s patent application is invalid for lack of novelty under 102(a)(1)

24. Hypothetical 2 Able on June 1, Year 1 enters into a confidential sales agreement with Company X to sell units of Able’s invention Without more, Able has until June 1, Year 2 to file a patent application on the invention

25. Hypothetical 3 Same facts as Hypo 3, but in addition, Baker on July 1, Year 1 publishes in Science magazine a full description of the invention sold in confidence by Able on June 1, Year 1 If Able files a patent application on or after July 1, Year 1, Able’s invention will be invalid for lack of novelty due to Baker’s publication

26. Hypothetical 4 However: If the examiner asserts against applicant Able the reference published by Baker prior to Able's filing, Able will be able to avoid Baker's publication if Able can prove that the subject matter was disclosed by Able himself in a public disclosure (NOT a “mere” disclosure) that occurred prior to Baker’s disclosure. In other words, if Able "disclosed behind" Baker's publication, Able will be able to use the grace period to avoid the effect of Baker's publication.

27. Hypothetical 5 Baker sells in confidence units of an invention on June 1, Year 1. Able files a patent application on the same invention on June 30, Year 2 – more than 1 year after Baker’s confidential sale. Able’s patent is NOT invalid, because Baker’s on sale activity does not fall within any prior art category in 102(a)(1). The grace period is irrelevant; there is no prior art to trigger a grace period – no “disclosure” has been made as that term is used in the grace period provision.

28. Three Main Issues Under Novelty What is the prior art: what is a “reference”? Timing Issues: What is in, and out, of the “prior art”? Identity standard: how similar does a prior art reference have to be to anticipate (destroy novelty, invalidate) a patent?

29. Subsidiary Issue Practical: burden of proof, details of proving prior art dates

30. 35 USC 102 “A person shall be entitled to a patent unless....”

31. 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)

32. Key Distinction Though both covered by § 102, novelty and statutory bars are very different Novelty: is it new? Statutory bars: did you file before the cutoff date? Did you file on time?

33. 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?

34. § 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....

35. What is the key difference? The CRITICAL DATE is different for novelty vs. the statutory bars Novelty: date of invention Statutory bars: Filing date minus one year

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

37. 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.

38. 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

39. 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.

40. 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

41. § 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....

42. Important Concept: the “Critical Date” The Invention Date

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

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

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

46. In re Robertson Page 365 Held: Claim 76 not anticipated

47. United States Patent 5,279,604 Robertson, et al. January 18, 1994 Mechanical fastening systems with disposal means for disposable absorbent articles Abstract A disposable absorbent article with a mechanical fastening system having an additional fastening element so as to provide convenient disposal of the absorbent article. The mechanical fastening system preferably comprises a tape tab having a first fastening element, a landing member comprising a second fastening element engageable with the first fastening element, and an additional fastening element for allowing the absorbent article to be secured in a configuration that provides convenient disposal of the absorbent article. The additional fastening element preferably comprises a second fastening element affixed to the backing surface of at least one of the tape tabs Inventors: Robertson; Anthony J. (Blue Ash, OH); Scripps; Charles L. (Brookfield, WI) Assignee: The Procter & Gamble Company (Cincinnati, OH) Appl. No.: 918156 Filed: July 20, 1992

50. Claim 76 [A] mechanical fastening system for forming side closures... comprising [1] a closure member... comprising [a] a first mechanical fastening means for forming a closure, said first mechanical fastening means comprising [i] a

51. first fastening element; [2] a landing member... comprising [a] a second mechanical fastening means for forming a closure with said first mechanical fastening means, [b] said second mechanical fastening means comprising a second fastening element mechanically engageable with said first element; and

52. [3] disposal means for allowing the absorbent article to be secured in a disposal configuration after use, said disposal means comprising [a] a third mechanical fastening means for securing the absorbent article in the disposal configuration, said third mechanical fastening means comprising [i] a third fastening element mechanically engageable with said first fastening element....

53. In re Robertson Claim 76: A mechanical fastening system for forming side closures comprising [1] a closure member … comprising [a] a first mechanical fastening means, said [means] comprising [i] a first fastening element... [2] a landing member, comprising... [3] disposal means, comprising...

54. [1] a closure member [2] landing member [3] disposal means

55. Prior Art United States Patent 4,895,569 Wilson, et al. January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam

56. The Presumptive Invention Date: Robertson application filed United States Patent 4,895,569 Wilson: January 23, 1990 Filed: July 20, 1992

58. Wilson Patent Issued before the “Critical Date” The Robertson Invention Date The Prior Art

59. Wilson Patent is IN THE PRIOR ART The Robertson Invention Date The Prior Art

60. United States Patent 4,895,569 Wilson, et al. * January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam Abstract A disposable absorbent garment (10) of the type having opposed engageable waistband portions (14) separated by an intermediate portion (16), comprises a breathable elastomeric nonwoven fabric outer cover (12) and a superposable absorbent structure (32), Inventors: Wilson; John C. (Neenah, WI); Rajala; Gregory J. (Neenah, WI); Boland; Leona G. (Neenah, WI); Zehner; Georgia L. (Larsen, WI) Assignee: Kimberly-Clark Corporation (Neenah, WI) [*] Notice: The portion of the term of this patent subsequent to October 20, 2004 has been disclaimed.Appl. No.: 089647 Filed: August 25, 1987

61. Securing Tab Robertson ‘604 Patent

62. Alternative Embodiment: No separate securing tab

66. [1] a closure member [2] landing member [3] disposal means ??

67. Wilson specification “Disposal of the soiled garment... Is easily accomplished by folding the front panel... Inwardly and then fastening the rear pair of mating fastening members to one another, thus neatly bundling the garment...”

68. P. 364 Anticipation … requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 U.S.P.Q.2D (BNA) 1051, 1053 (Fed. Cir. 1987)

69. Inherency – p. 364 “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”

70. Wilson reference –Closure member –Landing member –Disposal means with... 3 rd fastening element? Wilson specification: “fasten rear pair of mating fastening members to one another...” p 368

71. Fed Cir “The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize. It cited no extrinsic evidence so indicating.”

72. “[T]he Board failed to recognize that the third mechanical fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of the two other mechanical means used to attach the diaper to the person... [T]he Board’s analysis rests upon the very kind of probability or possibility — the odd use of fasteners with other than their mates — that this court has pointed out is insufficient to establish inherency.”

73. Bd of Appeals opinion “[A]n artisan would readily understand the disposable absorbent garment of Wilson... as being inherently capable of [making the third fastening element] mechanically engageable with [the first fastening element]” — i.e., using the secondary closure not with its mate, but with one of the primary snap fasteners.”

74. In re Klopfenstein 380 F.3d 1345 (Fed Cir 2004) “Printed Publications” for the modern era.. Page 405

75. In October 1998, the appellants, along with colleague M. Liu, presented a printed slide presentation entitled "Enhancement of Cholesterol-Lowering Activity of Dietary Fibers By Extrusion Processing" at a meeting of the American Association of Cereal Chemists ("AACC"). The fourteen-slide presentation was printed and pasted onto poster boards. The printed slide presentation was displayed continuously for two and a half days at the AACC meeting.

76. AACC 1998 Annual Meeting Poster # 127. Click title to see full text of poster. Enhancement of cholesterol-lowering activity of dietary fibers by extrusion processing. M. LIU, C.F. Klopfenstein, and J.L. Brent. Department of Grain Science and Industry, Kansas State University, Manhattan, KS 66506

78. If this food is so safe, why do we have to wear hardhats?

79. Can you believe people actually eat this stuff?

80. The statutory phrase "printed publication" has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was "published.“ -- p. 406

81. Billboard hypothetical: p. 406 “’public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication,’” In re Hall –NOT just indexing “The reference was shown with no stated expectation that the information would not be copied or reproduced by those viewing it.”

82. The factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.

83. Where professional and behavioral norms entitle a party to a reasonable expectation that the information displayed will not be copied, we are more reluctant to find something a "printed publication." This reluctance helps preserve the incentive for inventors to participate in academic presentations or discussions. Where parties have taken steps to prevent the public from copying temporarily posted information, the opportunity for others to appropriate that information … is reduced. -- p. 409