1. Is There a Loss of Right?

102 Novelty Attack 3

1.  Is there a Loss of Right?

  1. The loss of right provisions key off of the date that is one year prior to the applicant’s filing date (referred to as the §102(b) critical date).
  1. 102(b) – applies when, more than one year before the application’s filing date, the invention was:

(1)  Patented anywhere in the world;

(2)  Described in a printed publication anywhere in the world;

·  A printed publication is a document or drawing will be considered a printed publication if it is sufficiently accessible to the public interested in the particular technology.

-  A single cataloged thesis in a foreign university’s library was considered a printed publication (Hall).

-  A thesis, cataloged by the author’s name, listed among 450 others on index cards in a shoebox in a chemistry department’s library did not constitute a printed publication (Cronyn).

-  A poster presentation at an academic conference on display for three days, never reproduced, was held to be a printed publication (Klopfenstein).

(3)  In public use in the United States; or

·  If an inventor, having made the device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and knowledge of the use may be confined to one person (Egbert – corset case).

·  The key factor is whether the inventor kept “control” over the use of the invention.

·  This use may be “secret” but use to gain a competitive advantage over others constitutes public use (Metallizing Engineering Co. – deemed public use of process used to condition metals even those process not discernible from finished product).

·  Does the experimental use defense apply (City of Elizabeth – paving streets)?

-  Was the use by the inventor, or someone under his direction, by way of experiment, and in order to bring the invention to perfection?

(4)  On sale in the United States.

·  In order to be “on sale,” two conditions must be met:

(1)  The invention must be the subject of a commercial offer for sale; and

-  This must rise to the level of an offer such that the other party could make it into a binding contract by simple acceptance

(2)  The invention must be ready for patenting, which can be satisfied in two ways:

-  The invention may have already been reduced to practice; or

-  “Reduced to drawings” in the sense that drawings or written descriptions of the invention exist allowing a PHOSITA to practice the invention (Pfaff – no actual sockets built but mechanical drawings and descriptions existed at time he accepted purchase order).

  1. 102(c) – the inventor has abandoned the right to patent protection
  1. 102(d) – this applies when:

(1)  An inventor files a patent application in a foreign country;

(2)  Files another app. on the same invention in the US more than one year later; and

(3)  The inventor’s foreign patent has already issued before the U.S. filing

2.  Is there a Lack of Novelty?

  1. Does the reference constitute prior art under §102?

(1)  Adhering to the strict identity rule, the reference must expressly or inherently disclose each and every element of the invention within the four corners of the reference.

·  If the reference does not disclose every element of the invention, look to §103 and DOE

  1. 102(a) – a reference constitutes prior art when, before the invention, the reference is:

(1)  Known or used by others in the US, or

(2)  Patented or described in a printed publication anywhere

·  The knowledge or use be available to the public (Gayler – not public when invention was hidden inside of fireproof safe no one could see)

·  Can the inventor “swear behind” the reference?

-  The invention date is initially presumed to be the filing date but an inventor may “swear behind” that date.

-  The inventor must present evidence that establishes either:

§  An actual reduction to practice of the invention prior to the effective date of the reference, or

§  Conception of the invention prior to the effective date of the reference plus due diligence from just prior to the effective date until a subsequent actual reduction to practice date or to the filing of the patent application.

  1. 102(e) – a reference constitutes prior art when, before in the invention:

(1)  invention is described in a patent application published in the US, or

(2)  Described in a granted patent anywhere in the world (US or designated US and published under PCT in English)

·  A prior art US patent is to be treated as constructively published as soon as it is filed. Thus, the effective date of is the date of the US filing.

·  The effective date of a foreign patent is the filing date.

·  To constitute prior art, the effective date must precede the date of invention of the claim.

  1. 102(f) – the applicant did not, in fact, invent the subject matter sought to be patented
  1. 102(g) – this deals with either an interference proceeding or a claim of anticipation:

(1)  Interference proceedings occur when two or more parties apply for a U.S. patent on the same invention, each having independently made the invention, anywhere in the world. The party who was first to invent obtains the patent.

·  The party to file first is presumptively entitled to the patent unless the other party presents evidence of an earlier reduction to practice (actual, making of the invention, or constructive, filing of a patent application), or conception of the invention plus due diligence until reduction to practice or the filing of a patent application.

·  Due diligence is proved by evidence that the inventor was continuously active in working towards a reduction to practice.

(2)  This is triggered in an ex parte proceeding where an examiner states there was an earlier “making” of the invention in the U.S. and that making was introduced to the U.S. public within a reasonable time period thereafter (e.g., patenting, publication, sales, public use, etc.).

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