1. 1 PATENT LAW Randy Canis CLASS 3 Anticipation; Patent Reform Introduction Reading a Patent

2. 2 102 Past v. Current v. Future 102

3. 3 Anticipation (Chapter 4) An invention must be new at conception by an original inventor to be patentable. An invention is anticipated if someone else has already invented the invention.

4. 4 102 Breakdown Anticipation Statutory Bar – 102 (b), (c) and (d) Novelty: Prior Invention - 102(a), (e), (f) and (g)

5. 5 Section §102 §102. Conditions for patentability; 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

6. 6 Section §102 §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, or

7. 7 Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (c) he has abandoned the invention, or

8. 8 Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

9. 9 Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (e) The invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or

10. 10 Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (f) he did not himself invent the subject matter sought to be patented, or

11. 11 Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, 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.

12. 12 Breaking Down 35 U.S.C. 102 An inventor must invent something new to become eligible for patent protection. 102 –Novelty: time inventor completed invention – (a), (e) & (g) –Statutory Bar: time inventor filed the patent application – (b) & (d) “First to Invent” - Only the first to invent can obtain patent protection, not the first to file. [Under Historic 102] Critical date – one year prior to the filing of the patent application Determining the current state of the art at the time of the invention What is a reference? What is “prior art”?

13. 13 Anticipation Inquiry –Does a reference qualify as a prior art reference? –Does the reference and the claimed invention both disclose the same invention? Must be in a single reference, and not a combination of two or more references. Enablement –Does the reference enable those skilled in the art to practice the invention without undue experimentation?

14. 14 Example –Person X invented an apparatus comprising A, B, C and D on January 1, 2005. Person X filed a patent application on March 1, 2005 covering the combination. –The combination of A, B, C, D was disclosed in a publication available in the United States on November 1, 2004 by a person other than Person X. –If the Examiner cites the publication against Person X, is Person X barred from obtaining a patent on the combination under 102(a), (e) and/or (g)?

15. 15 Titanium Metals Corp. of America v. Banner Procedural Background Factual Background Issue: –Is a newly discovered property of something already known patentable?

16. 16 Titanium Metals Corp. of America v. Banner What is a continuation-in-part? What is the invention? Why is this case being heard? What is the Russian article, and what does it disclose?

17. 17 Titanium Metals Corp. of America v. Banner What did the board find? –“[T]he board found that the claimed alloys were not new, because they were disclosed in the prior art.” –Did it matter that the Russian article did not disclose corrosion-resistant properties of the alloys?

18. 18 Titanium Metals Corp. of America v. Banner Key issue for anticipation in this case –Was the alloy new? –Do the claims read on an alloy which was already known by reason of the disclosure of the Russian article?

19. 19 Titanium Metals Corp. of America v. Banner “Congress has not seen fit to permit the patenting of an old alloy, known to others through a printed publication, by one who has discovered its corrosion resistance or other useful properties, or has found out to what extent one can modify the composition of the alloy without losing such properties.”

20. 20 Titanium Metals Corp. of America v. Banner Ruling –Reversed district court’s ruling that the Commissioner issue a patent containing claims 1, 2 and 3. Holding –A newly discovered property of something already known is not patentable. Dicta

21. 21 Anticipation “If the claimed invention can be found within the ambit of a single prior art reference, then the invention has been anticipated. References may not be combined during this inquiry, nor may elements that are analogous to the disclosure of a reference be considered.”

22. 22 Inherency

23. 23 Continental Can Co. v. Monsanto Co. Issue: –When an earlier reference intrinsically, rather than explicitly, discloses a subsequently claimed invention, should it still it be considered prior art? –Inherency

24. 24 Continental Can Co. v. Monsanto Co. Inherency dicta –“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. … If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”

25. 25 Continental Can Co. v. Monsanto Co. Holding –“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such 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.”

26. 26 Schering Corp. v. Geneva Pharmaceuticals, Inc Background –Who is Schering and what is their invention? –Schering filed suit against defendants seeking to make generic versions –D.C. the ‘233 patent anticipated claims 1 and 3 of the ‘716 patent; summary judgment of invalidity

27. 27 Schering Corp. v. Geneva Pharmaceuticals, Inc “A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention. … Moreover, a prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.”

28. 28 Schering Corp. v. Geneva Pharmaceuticals, Inc Accidental Anticipation? –“DCL is not formed accidentally or under unusual conditions when loratadine is ingested. The record shows that DCL necessarily and inevitably forms from loratadine under normal conditions. DCL is a necessary consequence of administering loratadine to patients. The record also shows that DCL provides a useful result, because it serves as an active non-drowsy antihistamine. In sum, this court's precedent does not require a skilled artisan to recognize the inherent characteristic in the prior art that anticipates the claimed invention.”

29. 29 Schering Corp. v. Geneva Pharmaceuticals, Inc Typical inherency cases –“In this court's prior inherency cases, a single prior art reference generally contained an incomplete description of the anticipatory subject matter, i.e., a partial description missing certain aspects. Inherency supplied the missing aspect of the description. Upon proof that the missing description is inherent in the prior art, that single prior art reference placed the claimed subject matter in the public domain.”

30. 30 Schering Corp. v. Geneva Pharmaceuticals, Inc Should the court find anticipation when the entire structure of the claimed subject matter is inherent in the prior art? “This court has recognized that a person may infringe a claim to a metabolite if the person ingests a compound that metabolizes to form the metabolite.”

31. 31 Schering Corp. v. Geneva Pharmaceuticals, Inc “[A]nticipation requires only an enabling disclosure.” “A reference may enable one of skill in the art to make and use a compound even if the author or inventor did not actually make or reduce to practice that subject matter.”

32. 32 Schering Corp. v. Geneva Pharmaceuticals, Inc According to the court, how should the invention be claimed?

33. 33 Inherency Recognition Must a person of ordinary skill in the art recognize that the missing element is inherently there?

34. 34 Location of the Disclosure Does the single reference just have to include the disclosure somewhere in the reference, or does it need to be disclosed in a particular way?

35. 35 Arranged in the Claim “[T]he prior art reference in order to anticipate under 35 U.S.C. § 102 must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.Cir.1983).

36. 36 Four Corners “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net Moneyin, Inc. v. Verisign, Inc., Fed. Cir. 2008

37. Patent Reform Analysis 37

38. Form of Patent Reform H.R. 1249 Leahy-Smith America Invents Act or AIA –Status – Passed Rules Implementing Passage of AIA –Status – Some rules are passed, others are still to be developed Case Law –Status – To be developed 38

39. 39 When Do the Provisions of AIA Go Into Effect? Day of Enactment Sept 16, 2011 10 Days Sept 26, 2011 Oct 1, 2011 60 Days Nov 15, 2011 12 Months Sept 16, 2012 18 Months Mar 6, 2013

40. Day of Enactment Reexamination transition for threshold Tax strategies are deemed within the prior art Best Mode Human organism prohibition Virtual Marking False Marking Venue Change OED Statute of Limitations Fee Setting Authority Establishment of micro-entity 40

41. Tax Strategies “[A]ny strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.” Applies to any patent application that is pending on, or filed on or after, that date, and to any patent that is issued on or after that date 41

42. Best Mode “[T]he failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable” Best mode is effectively dead However, there is still value in disclosing as claims may be narrowed during prosecution 42

43. Human Organism Prohibition “[N]o patent may issue on a claim directed to or encompassing a human organism.” –Contrast to claims on other micro- organisms or organisms Applies to any application for patent that is pending on, or filed on or after, the date of enactment 43

44. Virtual Marking “Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when …” Allows an additional option for marking… 44

45. False Marking Denies standing for any false marking complainant who cannot prove a competitive injury Provision is retroactive Many false marking claims have already been dismissed 45

46. Venue Change DDC to EDVA for suits brought under 35 U.S.C. 32, 145, 146, 154 (b)(4)(A), and 293 46

47. Fee Setting Authority PTO now has the ability to control its own fees 47

48. 10 Days Sept 26, 2011 Prioritized examination 15% transition surcharge 48

49. Prioritized Examination Track 1 –$4,800 Examination fee (50% reduction for small entity) –Final disposition on average within 12 months from examination request grant –Must be filed by EFS-WEB –Max of 4 indep. and 30 total claims 49

50. Oct 1, 2011 Reserve Fund 50

51. 60 Days Nov 15, 2011 Electronic filing incentive –$400 additional fee for paper submissions of applications 51

52. 12 Months Sept 16, 2012 Inventor’s oath/declaration Third party submission of prior art for patent application Supplemental examination Citation of prior art in a patent file Priority examination for important technologies Inter partes review Post-grant review Transitional post-grant review program for covered business method patents 52

53. Third Party Submission Allows third parties to submit printed publications of potential relevance to examination. –Provide a written explanation of the relevance of the submitted documents. –Pay a fee. –Include a statement affirming that the submission is being made in compliance with new 35 U.S.C. 122(e). Timing limitations on submission As an alternative, third parties can continue to provide prior art to the Applicant However, value of Examiner review of explanation versus possible prejudicial view of explanation in potential litigation should be considered 53

54. Supplemental Examination Filed by the patent owner to “consider, reconsider, or correct” information believed to be relevant to the patent. USPTO must conduct supplemental examination and conclude it by issuing a certificate indicating whether the information raises a substantial new question of patentability (SNQ) within three months of the supplemental examination request date. Probably being implemented to reduce the number of reexaminations conducted by a patent owner in anticipation of possible litigation Enables the USPTO to make a “pre-ruling” 54

55. Citation of Prior Art Any person at any time may cite prior art consisting –of patents and printed publications to the PTO if the reference has a bearing on patentability of a claim –statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent Explanations of the prior art are also included in the file 55

56. Priority Examination Provides statutory basis for the Director to have the PTO prioritize examination of certain technologies “that are important to the national economy or national competitiveness” without recovering cost 56

57. Inter Partes Review On the date of enactment, the standard changed from a “substantial new question of patentability” to a higher standard of “a reasonable likelihood that the requestor would prevail” One after enactment, inter partes reexamination will become inter partes review, where the new standard will be adjudicated by the PTAB –Only 102 and 103 grounds; only patents and printed publications –Third party may submit petition after later of 9 months from issuance or termination of post grant, whichever is later –Director may limit during first four years 57

58. Post-Grant Review 9 -month window for reviewing patentability Threshold – “more likely than not” that at least one of the challenged claims is unpatentable Generally limited to first-to-file patents 58

59. 18 Months Mar 16, 2013 First-to-File Derivation proceedings Repeal of Statutory Invention Registration 59

60. First-to-File First-to-file with one year grace period Prior public use or prior sale anywhere counts as prior art U.S. patents and patent application publications are effective as of priority date—even if international 60

61. First-to-File Focus is on a patent applicant's “effective filing date” and whether prior art existed before that date Eliminates current Section 102(g), interferences, and questions of conception, diligence, reduction to practice, abandonment, suppression, and concealment. 61

62. Derivation Proceeding Conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant: –Must be subject to the first-inventor-to-file provisions –Must file a petition to institute a derivation proceeding within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. Petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the application 62

63. Satellite Offices USPTO to create 3 or more satellite offices within 3 years –Currently, examiners must work in D.C. but may participate in hotelling Detroit already designated as a first satellite office 63

64. Reading a Patent Front Page –Title –Abstract –Single Drawing –Inventor –Assignees –Search data and references –Examiner(s) & Firm Drawings Specification Claims 64

65. Reading a Patent What portion(s) of the patent/patent application should you look at to determine: 1.whether the patent is relevant to you? 2.whether you have an infringement concern? 3.what the reference teaches? 65

66. 66 Program Completed All course materials - Copyright 2002-12 Randy L. Canis, Esq.