Novelty II – Old an New

Patent LawProf Merges

9.22.2011

Agenda

• In re Klopfenstein: summary

• Section 102(e)–New “section 102(e) =

• Section 102(f): derivation

In each case . . .

• The reference is at least theoretically available

• What about a case where a reference is not even theoretically available?

– Welcome to § 102(e) !!

Oliver Wendell Holmes, Jr.

1841-1932

You think I look baggy? Wait til you’re old!

“Get down, you damn fool, before you get shot!!”

2 Patents in Alexander Milburn

Whitford3.4.1911

FiledIssued: 6.4.1912

Clifford

Filed: 1.31.1911

Issued: 2.6.1912

Specification,

Pat. ‘001

Rotating handle at end of bar

Cutting element attached to bar

Base, with passageway

U-shaped bar

Claim Elements

102(e): Compare DISCLOSURE in spec of Patent A vs. CLAIM in Spec of Patent B

Claims, Pat. ‘002

Why would anyone disclose but not claim an invention?

Why would anyone disclose but not claim an invention?

• Related field

• Interested only in one application

• Oversight

Disclosed: Broad disclosure

Claimed: narrower embodiments

First application: ‘001 Patent

X

002 Patent, Second application

X

CLAIMS what was disclosed, but NOT claimed, in earlier application

Whitford: Claimed

3.4.1911 Filed

Issued: 6.4.1912

Clifford: Disclosed but not

claimed

Filed: 1.31.1911

Issued: 2.6.1912

“The delays of the patent office ought not to cut down the effect of what has been done.” – p. 423

Holmes’ reasoning

• Note emphasis on who was “prior inventor”

• Is there a sense that allowing the claims to Clifford would somehow deprive Whitford of credit? Or somehow harm the public?

Holmes’ reasoning

• Emphasis on who was “prior inventor”

Two separate issues

– Is Whitford’s patent anticipated by Clifford reference?

– VS. Who has “priority” – ONLY RELEVANT IF WHITFORD AND CLIFFORD BOTH CLAIM THE SAME INVENTION

What if they HAD claimed the same invention?

This would be a priority case . . .

• If Whitford and Clifford had CLAIMED the same subject matter

• Covered under § 102(g) INTERFERENCE

Alexander Milburn

Codified in §102(e): No patent if –

(e) Invention was DESCRIBED [but NOT claimed] in . . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention

• “Clifford had done all he could do to make” description public

• “Mailbox rule” for disclosure purposes? – as with Acceptances in Contract law?

Codified in Section 102(e):

No patent if – (e) Invention was DESCRIBED [but NOT

claimed] in . . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention

102(e) Issues• Patent must be granted; then application is

prior art as of FILING DATE: Nunc pro tunc

– Provisional rejections

• Application must be “by another” – technical definition, inventive entities

• Amendments: “filed in the US” -- international priority filings; published US applications; provisional applications

MPEP 706.02(k) Provisional Rejection … Under 35 U.S.C. 102(e) …

Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under 35 U.S.C. 102(e) … should be made in the later filed application . . .

www.uspto.gov

Why “provisional”?

§102(e): No patent if –

(e) Invention was described in . . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention . . .

“Nunc pro tunc”

• “Now for then”

• When patent 1 ISSUES, the application for patent 1 becomes prior art against patent 2 AS OF THE FILING DATE OF PATENT 1 . . . .

• If patent 1 never issues, earlier filed application never becomes prior art

Topic 2: Inventive entities

• The prior application of A can be cited against the later application of A + B under 35 USC 102(e)

• Different “inventive entities” create prior art against each other

MPEP 706.02(k) Provisional Rejection … Under 35 U.S.C. 102(e) …

Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under 35 U.S.C. 102(e) … should be made in the later filed application . . .

www.uspto.gov

MPEP 706.02(f) (cont’d)

Note that, where there are joint inventors, only one inventor [need be] be different for the inventive entities to be different and a rejection under 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.

Inventive Entities

Inventor A

Inventive Entities - Overlap

Inventor A

Inventors A + B

• Combine applications – eliminate the reference

• File affadavit that claimed invention was derived from 102(e) prior art application

Overcoming 102(e) rejection

102(e) amendments

• PCT Filings: 102(e)(2) “treaty filings”

• Published patent applications – section 122(b)– Changed 1999

– “Backdate” publication to filing date

Fine Points• Foreign priority filings– Different treatment; only US Filings and their

precise equivalents under PCT trigger section 102(e) – In re Hilmer (35 USC 119)

• Provisional applications – 35 USC 111– Before 2008, assumed to trigger 102(e)

– Now, solidly established: Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606 (Bd.Pat.App. & Interf. 2008)

MPEP 706.02(f) Rejection Under 35 U.S.C. 102(e) [R-3] - 700 Examination of Applications

35 U.S.C. 102(e) is mostly utilized when the publication or issue date is too recent for the reference to be applied under 35 U.S.C. 102(a) or (b). In order to apply a reference under 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference.

New “102(e)”• 102(a)(2): Inventor gets patent UNLESS –

‘‘(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

End of another “home court” favoring rule

• New 102(d)(1) and (2) now provide that the earliest of a US domestic OR foreign filed counterpart is effective prior art against a later application that claims the same subject matter

• Goodbye, In re Hilmer

Agenda

• Section 102(e)

– Old and new

• Section 102(f)

102(f): “The (f) is for Fraud”

35 USC § 102(f)

“A person shall be entitled to a patent unless –

* * *

(f) He did not himself invent the subject matter sought to be patented

“Campbell” Invention

Flexible Feed Track

Zimmerman’s belt buckle

Two Main 102(f) Scenarios

• “Derivation” (invention theft) a la Campbell– Requirements: (1) Conception by Person A; (2)

communication (enabling) to person B

• Inventorship rejections and disputes – PTO and litigation

• Related to 35 USC § 256– Misjoinder (adding non-inventor to patent)– Non-joinder (omitting inventor from patent)

Typical derivation scenario

ROBINSON LABS, INC., Plaintiff,v.

WALLS INDUSTRIES, INC., Defendant.Sept. 30, 2003

2003 WL 22272122 (D.Minn.)

ROBINSON LABORATORIES

Robinson Labs

• 1. A multi-dimensional camouflaged garment, the garment serving to camouflage a wearer thereof by presenting an external appearance to an observer that tends to be indistinguishable from the environmental feature against which the wearer is observed, comprising:

a garment external surface, being viewable by an observer and having a first portion and a second potion;

the first portion of the garment external surface being formed of a substantially three dimensional material; and

the second portion of the garment external surface being formed of a substantially two dimensional material.

the first portion of the garment external surface being formed of a substantially three dimensional material; and

the second portion of the garment external surface being formed of a substantially two dimensional material.

US Pat 5,695,835

Robinson

Here, the crux of this analysis is whether the bow hunters first conceived of the invention claimed by the '835 Patent. The bow hunters put forth the idea of cutting off the leaves so as to remove the safety hazard. This was a specific settled idea addressing a solution to the problem at hand. Anyone with a pair of shears could reduce the invention to practice. The Court concludes that there is no material question of fact as to whether the bow hunters had conceived of an invention.

To establish derivation the party asserting invalidity must prove both prior conception of the invention by another and communication of that conception to the patentee “sufficient to enable [the patentee] to construct and successfully operate the invention.” International Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1376 (Fed.Cir.2004).

Transocean Offshore Deepwater Drilling, Inc. v. GlobalSantaFe Corp.

434 F.Supp.2d 836 (SD Tex 2006)

Genuine issue of material fact existed as to whether [fax], which included drawings of alleged infringer's offshore exploration and/or development drilling apparatus and which was sent to inventor of patented rig, was prior art for the purposes of showing derivation, precluding summary judgment in favor of patentee on alleged infringer's derivation defense. 35 U.S.C.A. § 102(f).

102(f) and “nonjoinder”

"If nonjoinder of an actual inventor is proved by clear and convincing evidence, a patent is rendered invalid."

Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed.Cir.1998).

-- at 1349.

However, "[i]f a patentee can demonstrate that inventorship can be corrected as provided by [35 U.S.C. § 256], a district court must order correction of the patent, thus saving it from being rendered invalid." Id. at 1350.

New Derivation Provision

§ 291. Derived Patents(a) IN GENERAL.—The owner of a patent may

have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.