Novelty II – Old an New

1. Novelty II – Old an New Patent Law Prof Merges 9.22.2011

2. Agenda • In re Klopfenstein: summary • Section 102(e) • New “section 102(e) = • Section 102(f): derivation

3. 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) !!

4. Oliver Wendell Holmes, Jr. 1841-1932

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

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

9. 2 Patents in Alexander Milburn Whitford 3.4.1911 Filed Issued: 6.4.1912 Issued: 2.6.1912 Filed: 1.31.1911 Clifford

10. 102(e): Compare DISCLOSURE in spec of Patent A vs. CLAIM in Spec of Patent B Claims, Pat. ‘002 Specification, Pat. ‘001 Claim Elements Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar

11. Why would anyone disclose but not claim an invention?

12. Why would anyone disclose but not claim an invention? • Related field • Interested only in one application • Oversight

13. First application: ‘001 Patent Disclosed: Broad disclosure X Claimed: narrower embodiments

14. 002 Patent, Second application CLAIMSwhat was disclosed, but NOT claimed, in earlier application X

15. Whitford: Claimed 3.4.1911 Filed Issued: 6.4.1912 Issued: 2.6.1912 Filed: 1.31.1911 Clifford: Disclosed but not claimed

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

17. 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?

18. 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

19. What if they HAD claimed the same invention?

20. This would be a priority case . . . • If Whitford and Clifford had CLAIMED the same subject matter • Covered under § 102(g) INTERFERENCE

21. 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

22. “Clifford had done all he could do to make” description public • “Mailbox rule” for disclosure purposes? – as with Acceptances in Contract law?

23. 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

24. 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

25. 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

26. 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 . . .

27. “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

28. 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

29. 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

30. 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.

31. Inventive Entities Inventor A

32. Inventive Entities - Overlap Inventor A Inventors A + B

33. Overcoming 102(e) rejection • Combine applications – eliminate the reference • File affadavit that claimed invention was derived from 102(e) prior art application

34. 102(e) amendments • PCT Filings: 102(e)(2) “treaty filings” • Published patent applications – section 122(b) • Changed 1999 • “Backdate” publication to filing date

35. 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)

36. 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.

37. 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.

38. 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

39. Agenda • Section 102(e) • Old and new • Section 102(f)

40. 102(f): “The (f) is for Fraud”

41. 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

42. “Campbell” Invention

43. Flexible Feed Track

46. Zimmerman’s belt buckle

47. 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)

48. Typical derivation scenario ROBINSON LABS, INC., Plaintiff, v. WALLS INDUSTRIES, INC., Defendant. Sept. 30, 2003 2003 WL 22272122 (D.Minn.)

49. ROBINSON LABORATORIES