1. Statutory Bars Prof Merges Patent Law – 9.30.2010

2. Agenda Finish Dow – 102(g)(2), prior invention of another as prior art: one last issue Introduction to Statutory Bars Compare novelty/anticipation (102(a)) to statutory bars (102(b))

3. Park - Dow C: late August, 1984 R to P: 9/13/1984 AVI Employees March 3, 1984: R to P (C?)

4. 35 USC § 102(g)(1) and (2) (g)(1) Inventor establishes [prior invention] in interference and not abandoned, suppressed or concealed...” (g)(2) Invention was made in this country by another inventor who had not abandoned, suppressed or concealed it.”

5. Pennock v. Dialogue 1793 Act Window into early 19 th C. patent law

6. Dec 7, 1736: 1 st Volunteer Fire Department, Ben Franklin, Philadelphia Reuben Haines, Philadelphia Hose Co. No. 1, 1803

7. In 1807, two of Reuben Haines’ fellow company men, James Sellers and Abraham Pennock, invented a riveted leather hose that revolutionized the design and again put Philadelphia in the forefront of firefighting ingenuity. [T]he riveted Sellers & Pennock hose worked well enough to allow suction engines to be created, changing forever the design and power of pumpers, which could be linked in tandem to bring water from a distance and without a bucket brigade.

10. 1793 Act: Sections 1 and 6 Section 1: When a person alleges they have made an invention “not known or used before the application” they get a patent Section 6: Infringer may prove that thing patented was “not originally discovered by the patentee, but had been in use … anterior to the supposed discovery by the patentee”

12. Argument for plaintiff-patentee Invention was under control of patentees at all times; no intent to abandon it Policy: don’t dwell on technicalities; don’t be like the British!

13. Justice Joseph Story

14. R. Kent Newmyer, Supreme Court Justice Joseph Story: Statesman of the Old Republic (UNC Press 1986) “In these [early patent] cases [Story] moved away from undue reliance on English law in the direction of an American patent law that would favor inventors and, following the spirit of the Constitution, serve national interest by promoting technological progress.... Story’s authority... was of immense importance in giving legitimacy to the new position. [H]e was identified by contemporaries as the pioneer in the liberalization of American patent law.”

15. Argument for defendant That mere invention gives no right to an exclusive use, unless a patent is obtained; and that if at a time when no right is infringed, the public fairly acquire possession of it, the inventor cannot, by subsequently obtaining a patent, take it away.

16. Sargeant argument (cont’d) That the inventor, by abstaining from getting a patent encouraged the public to use the article freely, and thus benefited his own manufactory. And he is not at liberty, when this advantage is exhausted, to turn round, and endeavor to reach another and a different kind of advantage, by appropriating the use exclusively to himself....

17. Policies Invention bestows an “inchoate” right – must be “perfected” (statute of limitations) Extension of monopoly: long period of (trade secret) use, then patent term Public reliance: reliance on nonexistence of patent

18. Justice Story Opinion What then is the true meaning of the words “not known or used before the application?” They cannot mean that the thing invented was not known or used before the application by the inventor himself… The words then, to have any rational interpretation, must mean, not known or used by others, before the application.

19. [T]hus construed, there is much reason for the limitation thus imposed by the act. … [T]he main object [of the 1793 Act] was “to promote … progress”; and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible. – p. 515

20. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any [use of the invention],

21. It would materially retard the progress of science and the useful arts, and give a premium to those who should be least prom pt to communicate their discoveries. – pp. 515-516 Key policy behind the statutory bar: prevent extension of monopoly

22. Section 6: It gives the right to the first and true inventor and to him only; if known or used before his supposed discovery he is not the first, although he may be a true inventor; and that is the case to which the clause looks. Novelty, in other words

23. A provision, therefore, that should withhold from an inventor the privilege of an exclusive right, unless he should, as early as he should allow the public use, put the public in possession of his secret, and commence the running of the period, that should limit that right; would not be deemed unreasonable. It might be expected to find a place in a wise prospective legislation on such a subject. If it was already found in the jurisprudence of the mother country [i.e., Great Britain] …. – p 516

24. Please note: 102(a) v. (b) The prior art event in Pennock was the activity of the inventors themselves Contrast with section 102(a): “… known or used by others...” You cannot destroy your own novelty, but you can (and inventors often do) create statutory bars

25. Statutory Bars § 102(b), (c), (d) An inventor loses the right to patent if, more than one year prior to the applicant’s filing, the invention was: patented by another anywhere patented by the applicant in a foreign country-- § d described in a printed publication anywhere in public use in the US on sale in the US Abandonment, § c.

26. Schematic Representation of § 102 § 102 (b): Statutory Bars [1] No patent if, more than one year prior to application, invention [A] patented or [B] described in printed publication [C] anywhere, or [2] invention -- [A] in public use or [B] on sale [C] in this country.

27. Statutory Bar Dates One Year Grace Period Dec. 20, 1996 Patent Application Jones Oct. 1995 Dec. 20, 1995 Jones §102(b) hurdle

28. Statutory Bar Dates One Year Grace Period Dec. 20, 1996 Patent Application Jones Oct. 1995 Dec. 19, 1995 Jones Dec. 19, 1996 Section 102(b) BarOne Day Gap

29. Egbert v. Lippmann Why not a novelty case? What are the essential facts?

30. Corset Springs

32. Egbert (cont’d) Conception, Jan – May 1855 R to P: May, 1855 (?) 1858: Second pair of springs Patent app filed: March 1866

33. Egbert Only 1 used – enough? “Non-informing public use” –Why enough to constitute a bar?

34. Justice William Woods

35. Sturgis evidence – p. 524 –Why did Barnes introduce it? –How did it affect the case?

36. Conclusion “The inventor slept on his rights for 11 years...” – p. 525

37. Samuel F. Miller, on Court 1860- 1890: dissent in Egbert

38. Moleculon Research When did Nichols invent his cube? Who saw/used it? When was a pat app filed?

42. Public Use/On Sale What was CBS’ public use evidence? –Why not successful? –P 530 Contra Egbert?

43. In TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965 (Fed.Cir.1984), the inventor was a dentist who installed the inventive orthodontic appliance in several of his patients. Although the inventor had not obtained any express promise of confidentiality from his patients, this court did not consider the use "public" because the dentist-patient relationship itself was tantamount to an express vow of secrecy. Id. at 972.

44. Metallizing Engineering

45. Judge Learned Hand

46. What is the critical date? Aug. 6, 1941

47. What is the main issue? Sale of output from a machine does not disclose the machine to the public; is it nevertheless a “public use”? –Compare: Peerless Roll, Gillman v Stern

48. Holding: YES Extension of monopoly is the key policy; public use found here, patent invalid: p. 535

49. §§ 102 (a) and (b) Prior Art Chart 102:Was Invention: By: In: Before: If yes: aknown others U.S. Date of invention N aused others U.S. Date of invention O apatented others any country Date of invention apublished others any country Date of invention P bpatented anybody any country 1 year prior to filing A bpublished anybody any country 1 year prior to filing T bin public use anybody U.S. 1 year prior to filing E bon sale anybody U.S. 1 year prior to filing N T