Patent Law and Policy

1. Patent Law and Policy University of Oregon Law School Fall 2009 Elizabeth Tedesco Milesnick Patent Law and Policy, Fall 2009 Class 6, Slide 1

2. Conditions for Patentability: Novelty 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… (e) the invention was described in - (1) an application for patent…by another filed in the United States before the invention by the applicant for patent 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 [PCT application] shall have the effects for the purposes of this subsection of an application filed in the United States; or… (g)(1) during the course of an interference…, another inventor involved therein establishes…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. Derivation (f) he did not himself invent the subject matter sought to be patented Patent Law and Policy, Fall 2009 Class 6, Slide 2

3. Claimed: ‘233 patent covers loratadine and ‘716 patent, filed more than three years after ‘233 patent issued, covers DCL, the metabolite formed in the patient’s body upon ingestion of loratadine. • “In general, a limitation or the entire invention is inherent and in the public domain if it is the ‘natural result flowing from’ the explicit disclosure of the prior art.” • “[I]f granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated.” Schering Corp. v. Geneva Pharmaceuticals, Inc. (2003) Patent Law and Policy, Fall 2009 Class 6, Slide 3

4. Blocking Patents and Enforcement Process Patent for New Use First, Smith claims compound A (with elements a + b + c). Then, Jones claims the process of using compound A (a + b + c) for X. Does Smith anticipate the Jones claims? If earlier, would Jones anticipate the Smith claims? Does Smith infringe Jones’ patent by practicing her invention? What if Smith wants to use compound A for X? Does Jones infringe Smith’s patent by practicing his invention? PharmaSales Co. only sells compound A, does not use it. Consumer uses compound A for purpose X. Does PharmaSales infringe the Smith patent? Does PharmaSales infringe the Jones patent? Does Consumer infringe the Jones patent? What are the problems with suing Consumer? Patent Law and Policy, Fall 2009 Class 6, Slide 4

5. Blocking Patents and Enforcement Product Patent for New Use First, Smith claims compound A (with elements a + b + c). Then, Jones claims compound A’ (with elements a + b + c + d (“substantially pure A”)). Does Smith anticipate the Jones claims? If earlier, would Jones anticipate the Smith claims? Does Smith infringe Jones’ patent by practicing her invention? What if Smith wants to use compound A for X? Does Jones infringe Smith’s patent by practicing his invention? PharmaSales Co. sells A’ (suited for use for X) Does PharmaSales infringe the Jones patent? Patent Law and Policy, Fall 2009 Class 6, Slide 5

6. § 102(a) Novelty [1] No Patent if, before date of invention, the invention was— [A] known or [B] used [C] by others [D] in this country, or [2] if, before date of invention, the inventions was— [A] patented or [B] described in a printed publication [C] anywhere. Patent Law and Policy, Fall 2009 Class 6, Slide 6

7. § 102(a) Novelty “Known… by others” • National Tractor Pullers Ass’n v. Watkins • Alleged prior art: “No longer existing alleged tablecloth drawings” known to a handful of people. • “Prior knowledge must be… reasonably accessible to the public” • The Barbed Wire Patent • “Corroboration is requires of any witness whose testimony alone is asserted to invalidate a patent, regardless of the witness’ level of interest in the lawsuit.” “Used by others” • Rosaire v. Baroid Sales Divison, National Lead Co. • Sufficient where work was done openly and in the ordinary course of the activities of the employer. “Affirmative act to bring the work to the attention of the public at large” not required. • Abandoned experiments not “use by others” • Public merely means “not secret.” Patent Law and Policy, Fall 2009 Class 6, Slide 7

8. § 102(a) Novelty “Printed publications” • Jockmus v. Leviton • Even though ephemeral, commercial catalogue from Germany is printed publication • Aluminum Co.: “Progress letter” was implicitly confidential, not a printed publication. • In re Klopfenstein • If in library, must be “catalogued or indexed in a meaningful way.” • If ephemeral, look to factors such as time of display, expertise of audience, expectation of copying, ease of copying. • Basic inquiry: “whether interested members of the relevant public could obtain the information if they wanted to.” • Must be published as of critical date. “Patented” • Reeves Bros. v. United States Laminating Corp. • “Patented” if foreign document grants a patent right to exclude others from producing, using, or selling the invention… for a specified period of time. • If only “patented” and not “published,” only claims are considered prior art. Patent Law and Policy, Fall 2009 Class 6, Slide 8

9. Timeline: • Jan. 31, 1911: Clifford files an application for a patent that discloses, but does not claim, an improvement in welding and cutting apparatus. • Mar. 4, 1911: Whitford files an application claiming the improvement disclosed in Clifford’s application. Whitford’s filing date was his date of invention because “there was no evidence carrying Whitford’s invention further back” of his filing date. • Feb. 6, 1912: Clifford’s patent is issued. • June 4, 1912: Whitford’s patent is issued. • “Obviously one is not the first inventor if, as is the case here, somebody else has made a complete and adequate description of the thing claimed before the earliest moment to which the alleged inventor can carry his invention back.” Alexander Milburn Co. v. Davis (1926) Patent Law and Policy, Fall 2009 Class 6, Slide 9

10. § 102(e) Novelty No patent if, before date of invention, the invention was described in— (1) an application for patent, published under section 122(b), by another filed in the United States, or (2) a patent granted on an application for patent by another filed in the United States, or [disclosures in PCT applications designating the United States and published in English as of their international filing date]; Patent Law and Policy, Fall 2009 Class 6, Slide 10

11. Conditions for Patentability: Novelty 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… (e) the invention was described in - (1) an application for patent…by another filed in the United States before the invention by the applicant for patent 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 [PCT application] shall have the effects for the purposes of this subsection of an application filed in the United States; or… (g)(1) during the course of an interference…, another inventor involved therein establishes…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. Derivation (f) he did not himself invent the subject matter sought to be patented Patent Law and Policy, Fall 2009 Class 6, Slide 11

12. § 102(e) Hypotheticals On January 1, 2004, I file an application claiming A but also disclosing B. On June 1, 2004, Smith files an application claiming B. Can Smith obtain a patent on B? Will Smith and I get into an interference? What does the PTO do with Smith’s application? 1/1/04: Jones files a U.S. application. 7/1/05: Jones’ application is published by the PTO; claims A but fully discloses B. 12/1/05: Jones’ patent issues. As issued, it claims A and B too. 5/1/06: I file an application seeking a U.S. patent on B. 12/1/06: U.S. courts invalidate Jones’ patent for failure to comply with the Best Mode requirement. Can I get a U.S. patent on B?  Maybe, if I can prove an invention date prior to 1/1/04 Patent Law and Policy, Fall 2009 Class 6, Slide 12

13. § 102(e) Hypotheticals 1/1/04: Jones files an application in India. 7/1/05: Jones’ application is published by the Indian patent office; it claims A but fully discloses B too. 12/1/05: Jones’ Indian patent issues. As issued, it claims A and B too. 5/1/06: I file an application seeking a U.S. patent on B. 12/1/06: Indian courts invalidate Jones’ patent. Jones never seeks U.S. patent rights. Can I get a U.S. patent on B?  Maybe, if I can prove an invention date prior to 7/1/05 Patent Law and Policy, Fall 2009 Class 6, Slide 13

14. § 102(f) Derivation (f) he did not himself invent the subject matter sought to be patented • Campbell v. Spectrum Automation Co. • Credibility determination re: which person actually invented • Simple inquiry, timeless, global • Evidence must be “clear and convincing” • Corroboration Rule • Oral testimony alone cannot defeat an issued patent; there must be some corroboration, though a rule of reason is applied in determining the sufficiency of corroboration. Patent Law and Policy, Fall 2009 Class 6, Slide 14