Priority, Intro to 103

1. Priority, Intro to 103 Prof. Merges – Intro to IP 1.24.12

2. Novelty vs. statutory bars • Novelty: who was first? (Measured from date of invention) • Statutory bar: did you file on time? (Measured from date of filing)

3. § 102. 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 … before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication …, more than one year prior to the date of the application for patent in the United States, or . . . .

4. Statutory bars v. novelty • 102(a) – Novelty; 102(b) – Statutory bars • Different as to (1) who may create prior art; (2) the categories of prior art; and (3) the critical date for determining prior art

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

6. 1856 1855 3/1866 5/1855 Frances Lee Begins “Public Use” The “Critical Date” for the Patent Application Barnes Actually Files Patent Application

7. AIA and Novelty • Summary of main changes to novelty under the new § 102 • Effective March 13, 2013

8. First-to-File System: Prior Art • Question: What statutory language establishes the first-to-file rule? • Answer: Section 102(a)(2). • Note that (a)(2) provides the fundamental rule that, between first filer A and second filer B, B cannot get a patent because A’s earlier effective filing date makes the application prior art to B. • Also, (a)(2) is also the reason for exception (iii)—the “abandonment” exception—to the first-to-file rule. If first filer A abandons his application prior to publication, then B could still get a patent.

9. First-to-File System: Prior Art • Now let’s examine the 5 categories of prior art in section 102(a)(1): • Patents • Printed publications • Public uses • On sale material • Otherwise available to the public • Questions: What’s new? What’s old? • Answers: Next slides.

10. First-to-File System: Prior Art • What’s new in these five categories of prior art? • Answer: • Timing (of course) – art is now “prior” if it is before the effective filing date, not the invention date (consistent w/ first-to-file philosophy). • End of Geographic Restrictions – all categories are global, including public use and on sale. • Addition of “otherwise available to the public”– similar to old “known … by others”.

11. First-to-File System: Prior Art • What’s old in these five categories of prior art? • Answer: • Much is old. • E.g., old “printed publication” cases still apply, though the addition of “otherwise available to the public” category might make some cases easier.

12. Novelty and Priority • Novelty is about “newness” – was the invention new, compared to the entirety of the “prior art”? • Priority: about being first; typically, where two patent applicants both try to claim the same invention

13. Priority and Interferences • A Patent Interference is a formal legal proceeding, heard before an administrative tribunal within the Patent Office • Two (or more) rival claimants both trying to obtain a patent for the same invention

14. Priority outside interferences • Sometimes inventor A has a patent, and asserts it against party B. B can defend on the grounds that A was not first to invent the invention • B can argue that B or a third party (C, D, whoever) was first to invent

15. 35 USC § 102(g)(1) and (2) (g)(1) Inventor establishes [prior invention in an interference contest] and has not abandoned, suppressed or concealed . . .” (g)(2) Invention was made in this country by another inventor who had not abandoned, suppressed or concealed it.”

16. Priority rule 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. -- 35 USC § 102(g)

17. Two basic issues • Who invented first? • Determined by the “priority rule” in the third sentence of § 102(g) • Did the first inventor “abandon, suppress, or conceal” the invention?

18. Abandonment • Occurs after the invention has been made • Subsequent to the “inventive milestones” of conception and reduction to practice • Usually: long delay between invention and filing or invention and commercialization

19. Griffith v. Kanamaru • Classic patent interference • Griffith (Cornell) • Kanamaru (Takeda Chemical)

20. Griffith v. Kanamaru Griffith Reduction to Practice Jan. 11, 1984 Conception Jun. 30, 1981 Kanamaru Filed Nov. 17, 1982

21. Priority rule 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. -- 35 USC § 102(g)

22. Griffith v. Kanamaru Reasonable Diligence? Griffith Reduction to Practice Jan. 11, 1984 Conception Jun. 30, 1981 Kanamaru Filed Nov. 17, 1982

23. Diligence • Does not break diligence: • (1) poverty and illness (generally a valid excuse for lapses in diligence if the circumstance really do prevent work on the invention); • (2) regular employment; and • (3) overworked patent attorney (excuse for delay in achieving constructive RTP). • Does constitute a break in diligence: • (1) Attempts by a university research to get outside funding (at least where sufficient funding is available inside the university), see Griffith v. Kanamaru; • (2) Attempts to get commercial orders; • (3) doubts about value or feasibility of invention; and • (4) work on other unrelated inventions.

24. Holding • Griffith loses • An unexplained break in the proof of continuous diligence during the period beginning just prior to Kanamerau’s “conception” (as evidenced here by filing date)

25. Kanamaru • Has to rely on filing date for proof of all three “inventive milestones”; statute in force at the time prevented proof of foreign inventive activities other than filing • All inventive events “rolled into” filing date

26. Trend: increasing globalization and harmonization • 1995: Foreign inventive activity allowed (any country that is a member of the World Trade Organization [WTO]) • 2011: Elimination of geographic restrictions on certain categories of US prior art (e.g., “known or used”)

27. Novelty finale: AIA • The AIA preserves some of the features of the old § 102(b) • “Grace period” for certain activities of the inventor • Exception to first to file rule

28. General rule: no patent if invention in prior art before applicant files • Grace period is an exception to this general rule • A period of time, after an event that would have destroyed novelty, in which the applicant can still file a valid patent

29. New Section 102 § 102. Conditions for patentability; novelty ‘‘(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— ‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; (2) [invention described in prior-filed patent applications that result in issued patents or published applications – analogous to old 102(e)]

30. Exception: Grace Period (b) EXCEPTIONS.— (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

31. Requirements for Grace Period • the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who [derived from the inventor] [Note: New 102(b)(1)(B) allows an inventor to remove prior art created by another if the inventor published earlier than the other.]

32. Priority of invention • First applicant to file now wins, usually. • Exceptions are (i) where second filer was first to publicly disclose the invention within the 1-year pre-filing grace period; or (ii) where first actual filer derived invention from another. • Second exception determined by a “derivation proceeding” – the heir to interferences under the old law.

33. Grace Period • The new law does permit a limited grace period that exempts from the prior art both (i) the inventor’s own “disclosures”; and (ii) other parties’ “disclosures” that occur after the inventor’s disclosure. • Grace period gives 1 year from date of activity to allow time to file. • But the scope of the grace period is unclear based on the wording of the Act.

34. Section 103 • Nonobviousness

35. Why not permit trivial patents? • Profusion of Paltry Patents: • Each patent individually will not impose significant output constraints, but ... • Economically Significant Patents: • Technical Triviality  Economic Triviality • Thus, a patent on an obvious development may impose significant output constraints.

36. Policy 2: Obvious patents may compromise the incentives to make nonobvious inventions. • Technically and economically trivial developments. • Policy: Preventing “thickets” of patents; increasing search costs for other inventors and businesses.

37. 35 USC Sec 103 § 103. Conditions for patentability; non-obvious subject matter (a)A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

38. Graham v. John Deere Is it obvious to move the hinge plate from position A under the shank to position 1 above the shank? C 3 2 B 1 A

39. Graham’s ‘811 Patent • Graham began marketing the clamp in the late 1940s or early 1950s, and continued producing it, with some modifications, for at least a decade and a half. • Some flaws became apparent with the design over time: • The shank would rub against the fixed upper plate of the clamp and cause wear. This wear was troublesome because the plate was connected directly to the frame of the plow and was difficult to replace. • The shank was held within the clamp only by the spring rod with a large hole. As it was pulled backwards, it would cause wear and damage in the spring rod.

40. First solution to shank-breakage problem: reinforcing brace clamp

41. Graham’s Spring Clamp • Graham’s second attempt at solution was more successful. • He added a spring mounting so that the clamp would give way when the forces on the shank were too great. • This invention successfully reduced bending and breaking of plow parts in rocky soil. • This invention also produced vibratory action that created alternating pockets and ridges that were capable of storing moisture that could sustain crops during dry periods.

42. Graham’s ‘798 Patent • Wear against upper plate and spring rod provided impetus for design of new clamp. • This is the patent at issue in Graham’s suit against John Deere. • Changes in the clamp: • Hinge plate has been moved above the shank so that the shank does not come into contact with the fixed upper plate. • The shank is secured to the hinge plate by a nut and bolt arrangement at the forward end and a stirrup at the rear. • Graham conceived of the design in 1950 but did not file patent application until August 27, 1951.

43. Figure 4: Graham ‘811 Spring Clamp. The spring (66) at the front end of the clamp holds the plow shank flat against the I-beam frame. The shank is pivoting against the rear of the clamp and the pivoting compresses the spring.

44. The ‘811 Graham Plow

45. The Graham Test • Scope and content of the prior art • Difference between the prior art and the claims at issue • Level of ordinary skill in the pertinent art

46. Graham points • “[T]he 1952 [patent law] revision was not intended to change the general level of patentable invention. • Ultimate question of patentability is one of law; lends itself to “several basic factual inquiries”