1. Intellectual Property Boston College Law School February 16, 2007 Patent - Novelty

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

3. 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 ….”

4. 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

5. 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 …

6. 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 …

7. 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 …

8. 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 ….”

9. 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.

10. 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.”

11. Priority Conception Reduction to Practice Conception Reduction to Practice Reduction to Practice Conception Reasonable Diligence

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

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

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

15. Administrative Next Class –Read Patent IV.B.4 – Nonobviousness