1. 102/103 Prior Art Patent Law 3.18.04

2. Sources of 102/103 Art 35 USC 103: “differences between subject matter sought to be patented and the prior art” Graham: “scope and content of the prior art” What is “the prior art” or purposes of 103?

3. Gradual expansion of 102/103 Prior art 102(a): not controversial 102(b) –The problem of “prior art” that is not actually in existence prior to the invention –In re Foster, p. 785: 102(b) IS a proper source of 103 prior art In re Bass (1973) –102(g) IS a proper source of 103 prior art

4. Oddzon Prods v. Just Toys, Inc. Design patent –Same standards for 102 and 103, in general District ct: prior disclosures to eventual patentee were 102(f) prior art –Recall Campbell v Spectrum Automation –“belt buckle” case

8. Is 102(f) “prior art”? Book, page 779 –Is 102(f) more like 102(a), (b), (e), and (g)? –Or more like (c) and (d) – “loss of right? –Or not like any other provision? Dictum in In re Bass: 102(f) is not about “prior art”

9. The 1984 Amendment to 103 Added what is now 103(c) “Subject matter developed by another [inventive entity], which qualifies as prior art only under 102(e), (f) or (g), shall NOT preclude patentability where subject matter and claimed invention were owned by same person or subject to obligation of assignment to same person at time invention was made”

10. Aside: the importance of Contracts! Same prior art that would invalidate patent when created by independent parties will be REMOVED from prior art by contractual agreement by all parties

11. Legislative activity Cooperative Research and Technology Act of 2003, HR 2391 Approved by IP Subcommittee 1/21/04

12. Other 103 Issues 103(b) –Biotech-specific provision –Limited uses