Chapter 5
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§ 102. CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO PATENT
A person shall be entitled to a patent unless —
N
(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
SB
(b) the invention was patented or described in a printed publication in this or a foreign country or in
public use or on sale in this country, more than one year prior to the date of the application for patent in the
United States, or
SB
(c) he has abandoned the invention, or
SB
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s
certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of
the application for patent in this country on an application for patent or inventor’s certificate filed more than
twelve months before the filing of the application in the United States, or
N
(e) the invention was described in –
(1) an application for patent, published under section 122(b), 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 an international application filed under the treaty defined in section 351(a) shall have the effects
for the purposes of this subsection of an application filed in the United States only if the international
application designated the United States and was published under Article 21(2) of such treaty in the
English language; or
D
(f) he did not himself invent the subject matter sought to be patented, or
N
(g) (1) during the course of an interference conducted under section 135 or section 291, another
inventor involved therein establishes, to the extent permitted in section 104, 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.
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.
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§ 102. CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO PATENT
A person shall be entitled to a patent unless —
•
N
(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
…
N
(e) the invention was described in –
(1) an application for patent, published under section 122(b), 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 an international application filed under the treaty defined in section 351(a) shall
have the effects for the purposes of this subsection of an application filed in the United States
only if the international application designated the United States and was published under
Article 21(2) of such treaty in the English language; or
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D
•
N
(g) (1) during the course of an interference conducted under section 135 or section
291, another inventor involved therein establishes, to the extent permitted in section 104, 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.
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.
(f) he did not himself invent the subject matter sought to be patented, or
Novelty Test
Claims of the Alleged Invention
Prior Art
Physical Things
Articles in Printed
Publications
Old Patents
[A] mechanical fastening system for forming side
closures . . . comprising
a closure member . . . comprising a
first mechanical fastening means for
forming a closure, said first mechanical
fastening means comprising a first
fastening element;
a landing member . . . comprising a
second mechanical fastening means for
forming a closure with said first mechanical
fastening means, said second mechanical
fastening means comprising a second
fastening element mechanically
engageable with said first element; and
disposal means for allowing the
absorbent article to be secured in a
disposal configuration after use, said
disposal means comprising a third
mechanical fastening means for securing
the absorbent article in the disposal
configuration, said third mechanical
fastening means comprising a third
fastening element mechanically
engageable with said first fastening
element . . . .
Robertson
• Claim Language:
• [A] mechanical fastening system for forming side closures . . .
comprising
– a closure member [e.g. the whole structure of tape or velcro tabs] .
. . comprising a first mechanical fastening means [the tape or tabs]
for forming a closure, said first mechanical fastening means
comprising a first fastening element [the sticky part of the tab];
– a landing member [the part of the diaper front to which the closure
member will attach] . . . comprising a second mechanical fastening
means for forming a closure with said first mechanical fastening
means, said second mechanical fastening means comprising a
second fastening element mechanically engageable with said first
element [part that attaches to the tab]; and
– disposal means for allowing the absorbent article to be secured in
a disposal configuration after use, said disposal means comprising
a third mechanical fastening means for securing the absorbent
article in the disposal configuration, said third mechanical fastening
means comprising a third fastening element mechanically
engageable with said first fastening element . . . .
Robertson
• Claim Language:
• [A] mechanical fastening system for forming side closures
. . . comprising
– a closure member [e.g. the whole structure of tape or
velcro tabs] . . . comprising a first fastening element
[the sticky part of the tab];
– a landing member [the part of the diaper front to which
the closure member will attach] . . . comprising a
second fastening element mechanically engageable
with said first element [part that attaches to the tab];
and
– disposal means … comprising a third fastening
element mechanically engageable with said first
fastening element . . . .
Robertson: One Embodiment of the
Applicant’s Diaper
60: Closure Member
62: 1st Fastening
Means
868: 3rd Fastening
Means
Note that most
embodiments will
have two closure
members, one for
each side.
Robertson: Another Embodiment of the
Applicant’s Diaper
60: Closure Member
62: 1st Fastening
Means
106: 3rd Fastening
Means
Third fastening
means is on the back
of the first fastening
means.
Robertson: Prior Art Wilson Diaper
Robertson
• Key question is whether the Wilson diaper teaches a “third
fastening element” that attaches to the “first fastening
element.”
• That question cannot be answered simply by comparing the
claim language in Wilson’s patent to the claim language in
Robertson’s application. Different language could describe
the same thing.
• Instead, the correct comparison is between Robertson’s
language and all of Wilson’s disclosed embodiments.
• Anticipation-Infringement Symmetry: The question is
whether the Wilson diaper would fall within Robertson’s
claim. This is the analysis that would be used in
infringement litigation except that, because the Wilson diaper
is prior art, a finding that it falls within Robertson’s claim will
result in the invalidation of Robertson’s claim.
• Here, the whole question boils down to whether one portion
of the Wilson diaper can serve as both a first fastening
element and as a third fastening element.
Robertson
• PTO Board:
– the Board ruled that one of the fastening means
for attaching the diaper to the wearer also could
operate as a third fastening means to close the
diaper for disposal and that Wilson therefore
inherently contained all the elements of claim 76.
• Majority:
– the Board failed to recognize that the third
mechanical fastening means in claim 76, used to
secure the diaper for disposal, was separate from
and independent of the two other mechanical
means used to attach the diaper to the person.
Robertson
• Judge Rader:
– The specification explicitly teaches that the first and third
fastening elements can be the same so long as they are
complementary, as they are in Wilson. Accordingly, I
agree with the Board that Wilson teaches the claimed
“third fastening element.”
• Patent Specification (now issued as # 6,736,804)
– the disposal means 68 may be either a discrete separate
element joined to the diaper 20 or a unitary element that
is a single piece of material that is neither divided nor
discontinuous with an element of the diaper 20 such as
the topsheet 26, the backsheet 28, or one of the first
fastening elements 62. (For example, one of the first
fastening elements may comprise a disposal means if the
fastening material is an identical complementary element
since the first fastening element of one tape tab may be
secured to the first fastening element of the other tape
tab.)
Robertson
• Note that the disagreement between the majority
and Judge Rader concerns not what Wilson
discloses but what Robertson is claiming.
• Is this a victory for Robertson?
• Robertson’s claims have now been definitively
interpreted as NOT covering a diaper where the first
fastening means serve a dual purpose --- to close
the diaper while it is being worn and to close the
diaper when it is being disposed.
• Robertson’s claims issued in May, 2004.
• Bifurcated Invalidity Inquiry: Always divide
analysis into 1) anticipation; and 2) obviousness.
Don’t mix the two!!!
Schreiber (Popcorn Top)
Schreiber (Popcorn Top)
• [T]he examiner was justified in concluding that the
opening of a conically shaped top as disclosed by
[the Swiss patent] is inherently of a size sufficient to
“allow[] several kernels of popped popcorn to pass
through at the same time” and that the taper of [the
Swiss patent’s] conically shaped top is inherently of
such a shape “as to by itself jam up the popped
popcorn before the end of the cone and permit the
dispensing of only a few kernels at a shake of a
package when the top is mounted on the container.”
Seaborg
• I claim:
•
1. Element 95. [Americium.]
• The problem: Prior to Seaborg’s work, Fermi had
produced element 95 in Fermi’s nuclear reactor
(which was located on the University of Chicago’s
campus!).
• Fermi produced element 95 but didn’t know it.
• It is also nearly impossible to find the element 95
because it is mixed in with tons of nuclear waste.
Seaborg
• The court begins with Hand’s statement:
– No doctrine of the patent law is better established than
that a prior patent or other publication to be an
anticipation must bear within its four corners adequate
directions for the practice of the patent invalidated.
• The court then reasons that:
– the claimed product, if it was produced in the Fermi
process, was produced in such minuscule amounts and
under such conditions that its presence was undetectable.
• It also agrees with Seaborg’s argument that:
– The possibility that although a minute amount of
americium may have been produced in the Fermi reactor,
it was not identified (nor could it have been identified)
would preclude the application of the Fermi patent as a
reference to anticipate the present invention.
Anticipation Analysis
• Two possible views:
– 1) Anticipation requires that the prior art have appreciated
that it was creating the invention.
– 2) Anticipation does not require appreciation. If the claims
would cover (and therefore enjoin) an activity that was
previously practiced, then the claim cannot be allowed
because the claim would detract from the public domain
and patents can’t do that.
• Though opinions contain much language to support theory 1,
recent cases make clear that theory 2 is more sound.
• To understand why theory 2 is sound, ask this question:
Should Seaborg now be able to use his claim to “Element
95” to enjoin Fermi-style nuclear reactors? These reactors
“make” element 95. Yet if Seaborg get the right to enjoin the
reactors, then the patent system has allowed an inventor to
gain rights over something in the prior art – an impossibility!
Hafner
• 1959: Klaus Hafner files German patent applications on new
chemicals; no use is described.
• 1960: He files in the US; no use is disclosed.
• 1961: Hafner’s applications are published in Germany, and
other publication describes the chemicals.
• 1964: Hafner refiles in the US after the PTO rejects his first
application for failing to satisfy section 112 because no use is
disclosed for the chemicals.
• PTO now rejects Hafner on the basis of, among other things,
his own 1961 publication of his patent specification. The 1961
publication enables for purpose of anticipation even though it
does not enable for purposes of 112.
• Key difference is that enablement for anticipation does NOT
require an known use; section 112 does.
• This case is consistent with theory (2). Anticipation prevents
any “backsliding” for the public domain. Prior art cannot be
patented even if the prior art does not yet have a use!
Titanium Metals
• 1970: Short Russian article is published.
– It is titled “Investigation and Mechanical Properties
of Ti-Mo-Ni Alloys.
– No use is disclosed.
– Alloys that fall within Titanium Metals’ claims are
revealed by two dots on published graphs.
• 1974: Titanium Metals’ employees file an application.
• Russian article constitutes prior art either under 102(a)
(probably) or 102(b) (for sure).
• The only question is whether the article anticipates the
claims.
Titanium Metals: Article’s Figure 1
Titanium Metals: Article’s Figure 1
Note two points:
1) The caption for Figure 1 says
that chart (c) plots Mo:Ni ratios of
1:3.
2) Chart (c) shows one point
where the total percentage of Mo +
Ni = about 1%. Since Mo:Ni are
mixed in a 1:3 ratio, there must be
.25% Mo and .75% Ni in this alloy.
Titanium Metals: Article’s Figure 2
Note two points:
1) The caption for Figure 2 says
that charts above show alloys from
Series III. If that corresponds to
alloy (c) (the facts aren’t clear), the
Series III will have Mo:Ni ratios of
1:3.
2) Chart on the bottom right side
(the editor’s parenthetical in the
book might be wrong) shows one
point where the total percentage of
Mo + Ni = about 1%. Since Mo:Ni
are mixed in a 1:3 ratio, there must
be .25% Mo and .75% Ni in this
alloy.
Titanium Metals
• Q: Why does the alloy made by the Russians invalidate
the claims?
• A: The claims cover any Ti alloy containing
– Mo (.2% -- .4%): Russian alloy has .25%
– Ni (about .6% to .9%): Russian alloy has .75%
– Iron (0 - .2%): Russian alloy has 0%
Titanium Metals
• Q: Why is there no enablement problem here? How can a
“dot” be enabling?
• A: The court finds:
Appellee’s expert, Dr. Williams, testified on cross
examination that given the alloy information in the Russian
article, he would know how to prepare the alloys “by at least
three techniques.” Enablement is not a problem in this case.
• Q: Why does the court hold the whole claim to be invalid when
only one combination within the many possible combinations is
disclosed in the Russian article?
• A: If the claim covers prior art, it is not valid. It is the
applicant’s job to draft a new claim to exclude the prior art.
Broccoli Sprouts Patent Case p.388
• John Hopkins researchers discover that eating cruciferous
sprouts prevents cancer.
• Q: Why can’t they patent eating sprouts?
• A: Federal Circuit has now held:
– "Inherency is not necessarily coterminous with the
knowledge of those of ordinary skill in the art. Artisans of
ordinary skill may not recognize the inherent characteristics
or functioning of the prior art.“
– But the [cancer-fighting] potential of sprouts necessarily
have existed as long as sprouts themselves, which is
certainly more than one year before the date of application
at issue here. See, e.g., Karen Cross Whyte, The Complete
Sprouting Cookbook 4 (1973) (noting that in "2939 B.C., the
Emperor of China recorded the use of health giving
sprouts"). … It matters not that those of ordinary skill
heretofore may not have recognized these inherent
characteristics of the sprouts.
Broccoli Sprouts Patent Case p.388
• Holding is consistent with the “no backsliding”
principle. People can’t be enjoined from eating
sprouts!
• Q: How then does John Hopkins get rewarded for
discovering this valuable new information?
• A: It’s not clear. Not all information is necessarily
patentable. Perhaps John Hopkins can apply for a
business method patent for markets sprouts as a
cancer fighting agent. The problem is that people can
still learn that sprouts fight cancer and then buy
generic sprouts from firms not licensed by Hopkins.
• Note this sort of ruling decreases the incentives to
look for new properties of existing substances.
References under 102(a)
• Statute says that applicant is not entitled to a patent if:
a) the invention was
– known or used by others in this country, [domestic]
– or patented or described in a printed publication in
this or a foreign country, [global inquiry]
before the invention thereof by the applicant for
patent, or
National Tractor Pullers v. Watkins
• 1963-64: Huls, Harms and Sage allegedly draw the
invention at issue on the back of a tablecloth in Huls’
mother’s kitchen.
• Sometime later: Watkins invents and patents.
• 1977: Huls tries to recreate tablecloth drawing from
memory.
• The court holds that
– Prior knowledge as set forth in 35 U.S.C. § 102(a)
must be prior public knowledge, that is knowledge
which is reasonably accessible to the public.
• Why? The statute says only that it must be known by
“others.”
Rosaire v. Baroid Sales
• 1935 to early 1936: Gulf Oil uses the method at issue.
Gulf Oil later stops using the method.
• Later in 1936: Horvitz conceives of the method. He
later patents it and assigns the patent to Rosaire.
• Gulf Oil Corporation employees had used the
prospecting method "in the field under ordinary
conditions without any deliberate attempt at
concealment or effort to exclude the public and without
any instructions of secrecy to the employees
performing the work."
Rosaire v. Baroid Sales
• The Fifth Circuit held that where "work was done
openly and in the ordinary course of the activities of
the employer," the work qualifies as a prior use for
purposes of § 102(a) even though Gulf had
discontinued use of the method and had not made any
"affirmative act to bring the work to the attention of the
public at large."
• Why doesn’t this court follow National Tractor Pullers?
Was Gulf’s work “reasonably accessible to the
public”?
Jockmus v. Leviton
• 1908: Catalogue is circulated in France. At least 50
copies.
• Later: Patentee invents.
• Q: Why is the catalogue a printed publication?
• A: The court holds that a publication must have
“enough currency to make the work part of the
possession of the art.”
– Note: A single copy in a library may be enough.
Later cases hold that a single copy is enough if the
copy is indexed by subject (In re Hall), not if
indexed by author and kept in a shoebox (In re
Cronyn).
Klopfenstein
• 1998: Display of slides at conference meeting. Slides
were displayed on posters. People were free to copy
the slides.
• 2000: Application is filed. 1998 display of slides could
qualify under 102(b).
• Even ephemeral publications can be publications.
• Court considers: 1) the lack of confidentiality explicit or
implicit, and 2) the simplicity of the invention.
“Patented” References
• This is not an important category of references. Why?
• What would be a hypothetical in which a reference
would qualify as patented but not as published?
Publication Problem
• 1/1/04: I send the final version of my article on “A New Method
of Chip Production” to the journal “Engineering Today” which is
published by GWU.
• 1/15/04: I place the article on my personal web page.
• 2/1/04: Copies of the journal issue containing my article roll off
the presses and are shipped via third-class mail.
• 2/2/04: One copy of the issue begins to circulate in GWU’s
engineering dept.
• 2/3/04: One copy is put in the GWU Engineering Library
(indexed as vol. 4 issue 2 of “Engineering Today”).
• 2/5/04: At least 20 libraries receive their copies;
• 2/6/04: The 20 libraries index the journal as GWU did.
• 2/7/04: 30 individual subscribers receive the journal.
• Q: When does the article enter the prior art?
“Defensive” Publications
• Even parties who do not want to patent their
developments need to know the publication rules
because they may want to prevent other parties from
obtaining patents on those developments.
• Patent lawyers thus may sometimes advise their
clients to make a “defensive” publication – a
publication that will prevent others from seeking patent
rights on a development that the client has made but
does not want to patent.
• Some firms specialize in making such publications
quickly and at low cost.
“Defensive” Publications: Advertisement for
a firm specializes in defensive publication
“Defensive” Publications: Advertisement for a
firm specializing in defensive publication
Prior Art Searching
• Many other firms specialize in searching the prior art.
These searches help attorneys:
– To advise their clients whether a development is
patentable in light of the prior art; and
– To draft patent claims that are patentable in light of
the prior art.
• A prior art search is not, however, a prerequisite for
filing a patent application. Many inventors do not
conduct a prior art search but instead simply rely on
the PTO’s search. That practice can be dangerous
because, if the PTO does not find some relevant art,
those references could invalidate claims in
infringement litigation.
• Cost of search is approx. $275+ (see next slide).
Prior Art Searching: Advertisement for a
prior art search firm
Alexander Milburn Co. v. Davis-Bournonville Co.
• Jan. 31, 1911: Clifford files an application disclosing
but not claiming an improvement in welding and
cutting apparatus.
• March 4, 1911: Whitford files an application claiming
the improvement disclosed in Clifford's application.
Whitford’s filing date was his date of invention
because, as the Court noted, “[t]here 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.
• Later: Whitford’s assignee sues Milburn Co.
Alexander Milburn Co. v. Davis-Bournonville Co.
• Q: Why does Holmes invalidate this patent?
• A: He relies on the statutory command that the patent
applicant must be “the original and first inventor or
discoverer … of the thing patented.” Whitford was not
the inventor because Clifford had disclosed the
invention more than a month before Whitford’s
invention.
• Q: Does a patent application always become part of
the prior art under Holmes’ ruling?
• A: No! It will only become part of the prior art if the
patent actually issues. The Patent Office did not
search abandoned application (which were then
secret) and Holmes does not disturb this practice.
102(e): Disclosures in U.S. Applications
• Codifies the Milburn rule, except that 1999 amendments make
applications part of the prior art as of their filing date if they are
published under the PTO’s 18-month publication rule (not just if
they are issued).
• Q: How is a 102(e) different from an interference?
• A: Interferences occur when both inventors claim the subject
matter. A 102(e) objection can occur only where the earlier filer
disclosed the subject matter that is being claimed by a later
filer.
• Q: How is 102(e) different from publication prior art under
102(a)?
• A: Publications enter the prior art only upon publication – i.e.,
when the public receives the information. The delays of the
publisher do count against the publication. By contrast, patent
filings become part of the prior art as of the date of filing if they
ultimately become public.
102(e): Disclosures in U.S. Applications
• Q: Do any international filings qualify for as prior art under
102(e)?
• A: Generally no, though there is one exception.
– 1. Disclosures in a foreign application for a foreign patent do
not get 102(e) treatment. They become part of the prior art
only when they are published.
– 2. If an applicant files overseas first and then files at the US
PTO within one year, then the US application is entitled to be
treated as if it had been filed in US at the time of the foreign
filing (see 35 USC 119) except that the 102(e) rule applies
from the date of the actual US filing (see In re Hilmer).
– 3. Exception: If the applicant files a PCT application
anywhere, it does qualify for 102(e) treatment if it
“designates” the US as a country wherein patent rights are
sought and it is published in the English language.
102(e): Disclosures in U.S. Applications
• Q: Why have this rule?
• A: Here are two reasons:
– 1. Patent applications provide a good storehouse of
knowledge that the PTO can easily search. If something is
disclosed but not claimed in an application, that applicant
must have thought it not new or nonobvious, or not worth the
trouble to claim. Very few high-value inventions are likely to
fall into this category.
– 2. If the information is disclosed in the applicant’s
specification, then it is probably necessary for that applicant
to make or use her invention (or necessary for using it in the
best mode). Granting a patent on that information to a later
applicant is not fair to the first applicant because it will cut
down on the value of the first applicant’s patent rights and
quite likely create blocking patents against the first
applicant’s technology.
102(e): Disclosures in U.S. Applications
• Jan. 1, 2004: I file an application claiming A but also
disclosing B.
• June 1, 2004: Smith files an application claiming B.
• Q: Can Smith obtain a patent on B?
• A: Yes, maybe. If my application never issues or is
never published, then Smith can patent B.
• Q: Will Smith and I get into an interference?
• A: Not unless I amend my claims to seek a patent on
B too.
• Q: What does the PTO do with Smith’s application?
• A: It cannot reject it until my application has been
issued or published.
Another Problem
• 1/1/04: Jones files a U.S. application.
• 7/1/05: Jones’ application is published by the PTO; it
claims A but fully discloses B too.
• 12/1/05: Jones’ patent issues. As issued, it claims A
and B too.
• 5/1/06: I file an application seeking a US patent on B.
• 12/1/06: US courts invalidate Jones’ patent for failure
to comply with the Best Mode Requirement.
• Q: Can I get a patent on B?
• A: Maybe, if I can prove an invention date prior to
1/1/04. (Jones’ work may also qualify as prior art
under 102(g), and that provision may push the
reference date of his work earlier.)
Another Problem
• 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 in the U.S. seeking a patent
on B.
• 12/1/06: Indian courts invalidate Jones’ patent. Jones
never seeks US patent rights.
• Q: Can I get a US patent on B?
• A: Maybe, if I can prove an invention date prior to
7/1/05. (Jones’ work cannot qualify as prior art under
102(g)(2) if it did not occur in US.)
102(f): Don’t Copy!!!
• This rule is timeless and global: If the alleged inventor
copied from someone else, then the patent is invalid.
• Agawam Co. v. Jordan, 74 U.S. (7 Wall.) 583 (1869).
Suggestions can defeat an issued patent only if they
“embraced the plan of the improvement” and “would
have enabled an ordinary mechanic, without the
exercise of any ingenuity and special skill on his part,
to construct and put the improvement in successful
operation.
• 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. Also the
evidence must be “clear and convincing” to invalid.
Christie v. Seybold: Timeline
• October 1885: Seybold conceives of a new device to
be used in a power press for bookbinding.
• Summer 1886: Christie allegedly conceives of his own
power press, which is similar to Seybold’s invention.
• July 12, 1888: Christie completes the production of his
first power press.
• April 1889: Seybold’s first power press is made.
• June 6, 1889: Seybold files.
• June 7, 1889: Christie files.
Christie v. Seybold: Simplified Timeline
•
•
•
•
•
•
October 1885: Seybold conceives.
Summer 1886: Christie conceives.
July 12, 1888: Christie RTP.
April 1889: Seybold RTP.
June 6, 1889: Seybold files.
June 7, 1889: Christie files.
Christie v. Seybold
Christie
Conception:
Summer 1886
Conception:
10/1885
Seybold
Reduction to
practice:
7/12/1886
Filed:
6/7/1889
R to P: Filed:
4/1889 6/6/1889
Christie v. Seybold: Legal Standard
• P. 451-452: The rule of priority is “that the man
who first reduces an invention to practice is
prima facie the first and true inventor, but that
the man who first conceives . . . [an invention]
may date his patentable invention back to the
time of its conception if he connects the
conception with its reduction to practice by
reasonable diligence on his part, so that they are
substantially one continuous act.”
Christie v. Seybold: The role of diligence
• “The burden is on the second reducer to practice
to show the prior conception, and to establish
the connection between that conception and his
reduction to practice by proof of due diligence . .
.” – p. 452
• While diligence can be used to push the date of
invention all the way back to the time of
conception, the second to RTP need only prove
diligence before the other inventor’s conception
in order to win the priority fight.
Christie v. Seybold
Christie
Conception
Reduction to
practice
Conception
ONLY Seybold’s diligence
matters because Seybold is
the first to conceive but last
to reduce to practice.
R to P
Diligence
Christie v. Seybold
Christie
Conception
C
Reduction to
practice
R to P
For Seybold to have won, he
would have had to prove
diligence from JUST PRIOR
to Christie’s conception.
Christie v. Seybold
• Q: What’s the basic rule of priority?
• A: Generally, the first to reduce to practice wins the race, with
three caveats.
– 1. Filing counts as a reduction to practice.
– 2. The first to conceive and last to reduce to practice may
claim an earlier date as the date of invention if unbroken
diligent efforts were begun prior to the other party’s
conception. With unbroken diligence, the date of conception
could be the earliest invention date.
– 3. Abandoned efforts are not counted.
• Q: What are excuses for inactivity?
• A: “The sickness of the inventor, his poverty, and his
engagement in other inventions of a similar kind are all
circumstances which may affect the question of reasonable
diligence.”
CHRISTIE v. SEYBOLD
• Q: Why does Seybold lose here?
• A: His poverty excuse was found wanting. He still could have
completed his invention in another shop.
• Q: Why should poverty generally be considered a bad excuse?
• A: The cost of filing an application is minimal, and filing is a
“constructive reduction to practice.” Note that an applicant can
also file a “provisional application” and delay prosecution for 1
year. The provision application must, however, still comply with
all of Section 112 except for the claiming requirements.
• Q: Tie on RTP?
• A: First to conceive wins.
• Q: Tie on filing on no other proof?
• A: No one gets a patent !!!
Peeler v. Miller
• March 14,1966: Miller reduces to practice an improved
hydraulic fluid to his employer.
• April, 1966, Miller discloses the invention to his
employer the Monsanto Company.
• January 4, 1968: Peeler files a patent application on a
fluid identical to Miller’s discovery.
• October 1968: Two and a half years after Miller’s
discovery, the Monsanto Company restarts work to
acquire patents on this and other company
discoveries.
• April 27, 1970: Miller files a patent application.
• July 6, 1971: The PTO issues a patent to Peeler.
Peeler v. Miller
Peeler et al. rely
only on filing date:
1.4.1968
March, 1966:
Miller conceives
and, on March
14th, RTP.
April 27, 1970:
Miller files
(finally!!).
§ 102(g) “Abandoned, Suppressed, or
Concealed”: Occurs After RTP!
R to P
March, 1966:
Miller RTP.
Filing
Date
April 27, 1970:
Miller files
(finally!!).
Excessive delay here is
considered “concealment” for
purposes of 102(g)
Peeler points
• “Counts” are basically claims.
– This is just special interference lingo.
• The court rejects the argument that Miller’s
March, 1966 results were just an “abandoned
experiment.”
• An abandoned experiment would mean that
there was no RTP. It would mean that the
experiment was not enabling. See also Rosaire,
where the court refused to find that a limited use
of a process was merely an abandoned
experiment.
Peeler points cont’d
• P 458: “Which of the rival inventors has the
greater right to a patent?”
– Classic Judge Rich approach to invention
priority issue.
– See also Paulik, p. 462: Judge Rich’s
concurring opinion states:
• It must be recognized that we are deciding a
priority issue: which party is to be regarded as the
“first” inventor in law, regardless of fact. The award
… should be to the one most deserving from a
policy standpoint.
• P.459: “In our opinion, a four year delay from
[RTP to filing] is, prima facie, unreasonably long
in an interference with a party who filed first.”
Compare to Diligence under §102(g):
Diligence is relevant before RTP.
Christie
Conception
Reduction to
practice
Conception
ONLY Seybold’s diligence
matters
R to P
Interferences – some fine points
• Administrative Trial under §135 before the
USPTO Bd Pat Int & App. An appeal lies to
Federal Circuit 35 USC § 141 …
• OR a party can sue in district court under § 146,
with the appeal from the trial going ultimately to
the Federal Circuit.
– This course is rare because it increases
litigation costs without changing the ultimate
decisionmaker (Fed. Cir.).
Paulik v. Rizkalla
Rizkalla files:
March 10, 1975
Nov., 1970 &
April 1971:
Paulik RTP.
Feb,
1975:
Paulik’s
attorney
begins
efforts
to file.
June 30,
1975:
Paulik files
(finally!!).
Paulik v. Rizkalla
Ignore the
abandoned,
suppressed or
concealed work from
1970/71.
Rizkalla files:
March 10, 1975
Nov., 1970 & April 1971:
Paulik RTP.
Feb, 1975:
Paulik’s attorney
begins efforts to
file.
June 30,
1975:
Paulik files
(finally!!).
Paulik wins because his
attorney is diligent
during this period.
Paulik v. Rizkalla
Paulik can then claim to be first to
conceive and last to RTP. If his
attorney was diligent in RTP
(constructively), then his date of
invention can go back before
March 10, 1975.
Nov., 1970 & April 1971:
Paulik RTP.
(Re)conception
Rizkalla files:
March 10, 1975
Feb,
1975:
Paulik’s
attorney
begins
efforts
to file.
June 30,
1975: RTP
Paulik files
(finally!!).
Diligence
Dow Chemical v. Astro-Valcour
• April 19, 1968: Japanese Styrene Paper Company (JSP)
receives a patent for a process to produce foam using non-CFC
blowing agents (the “Miyamoto patent”).
• August 22, 1984: After purchasing a license to the Miyamoto
patent, Astro-Valcour, Inc. (AVI) makes foam with isobutane
using the Miyamoto process.
• August 1984 – Sept. 1986: AVI builds facility to produce the
invention.
• August 24-28,1984: Dr. Chung Park with the Dow Chemical
Company conceives a similar process and product.
• Sept. 1984: Park reduces to practice.
• Dec. 1985: Park files.
• September 1986: AVI begins commercial production of its new
foam.
Dow Chemical v. Astro-Valcour
Park (Dow) conceives:
Park
RTP:
Sept.
1984
Park
files:
Dec.
1985
Aug. 24-28, 1984
1968:
Japanese
patent
Aug. 22,
1984:
AVI
blows
foam:
RTP.
Sept. 1986:
AVI begins
commercial
production.
Does the 2+ year delay
after RTP constitute
concealment?
Dow Chemical v. Astro-Valcour
• AVI is an inventor of the process and product even if
AVI’s employees didn’t think they were inventive.
– No requirement in the statute that an inventor must
recognize the inventive nature of the creation.
– Policy: Only relatively trivial inventions are likely to
have this problem.
• AVI did not abandon provided that, during the 2+
years between RTP and disclosure, it was taking
“reasonable efforts to bring the invention to market.”
– Compare 4 year delay in Peeler. Note that in
Peeler reasonable efforts were not being made to
bring that invention to the public during the delay.
• 102(g)(2) backdates prior art to time before publicity; it
is only a domestic inquiry.
102(g) Prior Invention Art
• Differences between 102(g)(1) interference prior art
and prior art from other novelty sections (a) & (e):
– Art must be claimed in a US application to qualify
under 102(g)(1)!
• Differences between 102(g)(2) non-interference prior
art and prior art from other novelty sections (a) & (e):
– Requires prior invention --- must be a RTP! Cf. (a)
and (e).
– Domestic inquiry only, unlike patented and printed
publication art from 102(a).
– Note: 102(a) art that is “used in this country by
others” (Rosaire–type prior art) might always qualify
under 102(g)(2) also. Since (g)(2) art may allow
early reference date, (g)(2) might “swallow”
Rosaire–type prior art.
Trade Secrets: Not Prior Art!
• They don’t qualify under 102(a) because they
are not public.
• They don’t qualify under 102(g) because,
although there is prior invention, the invention is
“concealed.”
Gould v. Schawlow
• This case shows that conception requires conception in detail.
The inventor must have known enough to instruct a person
skilled in the art how to practice the invention.
• Schawlow filed July 30, 1958. (Constructive RTP.)
• Gould filed April 6, 1959. (Constructive RTP.)
• Under such circumstances it is, of course, well established
interference law that the junior party, here Gould, must prove by
a preponderance of the evidence (1) conception of the
invention prior to July 30, 1958, and (2) reasonable diligence in
reducing it to practice commencing from a time just prior to July
30, 1958, to his filing date of April 6, 1959.
• Gould’s notes give a good theoretical description of the laser
but do not specify that the side walls of laser cavity must be
“transparent to the pumping energy” AND “transparent to or
absorptive of other energy radiated thereat.”
Gould v. Schawlow
Gould v. Schawlow
• Schawlow’s claim:
• 1. A maser generator comprising a chamber [marked
14 in Figure 5-10] having end reflective parallel
members [16 & 17] and side members [15], a negative
temperature medium disposed within said chamber,
and means [20] arranged about said chamber for
pumping said medium, said side members being
transparent to the pumping energy and transparent to
or absorptive of other energy radiated thereat.
Gould v. Schawlow
• Gould’s notes:
Some rough calculations on the feasibility of a LASER: Light
Amplification by Stimulated Emission of Radiation[.] [C]onceive
a tube terminated by optically flat, partially reflecting parallel
mirrors. The mirrors might be silvered or multilayer interference
reflectors. The latter are almost lossless and may have high
reflectance depending on the number of layers. A practical
achievement is 98% in the visible for a 7-layer reflector. . . .
Consider a plane standing wave in the tube. There is the effect
of a closed cavity; since the wavelength is small the diffraction
and hence the lateral loss is negligible.
If the tube contains an excess of atoms in a higher electronic
state, a plane travelling wave may grow by inducing transitions
in the atoms, which must add energy to the wave . . . .
There are several possibilities for excitation:
A. Optical excitation from an external discharge. . . .
Gould v. Schawlow
• Q: Do Gould’s notes indicate that the laser’s side
walls must be “transparent to the pumping energy” of
the laser?
• A: Possibly. He does say that one of the “possibilities
for excitation” include “[o]ptical excitation from an
external discharge.” The energy from the external
optical excitation would have to enter to the laser
chamber somehow. The chamber has mirrors on its
ends, so the side walls seem to be the only possibility.
• The harder point to find in the notes is the requirement
that the side walls be “transparent to or absorptive of
other energy radiated thereat.”
Gould v. Schawlow (con’t)
• Gould tried to fill in the gaps in his notes with expert testimony
to the effect that a person skilled in the art would have
understood the notes to include the elements that were not
explicitly mentioned.
• One problem is that the “art” in 1957 was very primitive – a
laser hadn’t yet been built. Thus, the court is skeptical of
Gould’s experts; it states: “we are unable to determine how
much, if any, [the experts’] views might be affected by
knowledge of the requisite structure of a laser device acquired
during the intervening years [between 1957 and 1963, when the
experts were testifying].”
• Ultimately, the court holds that “evidence of conception … must
must show a complete conception, free from ambiguity or
doubt.” Gould’s notes failed this standard because the notes
were “susceptible of numerous interpretations, each ostensibly
plausible.”
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.
RTP
• DSL Dynamic Sciences: A RTP need not be a commercial or
marketable product. It must only “actually work[] for its
intended purpose.” “[T]ests performed outside the intended
environment can be sufficient to show [RTP] if the testing
conditions are sufficiently similar to those of the intended
environment.”
• Estee Lauder v. L’Oreal: RTP requires knowledge by the
inventors that the invention works for its intended purpose.
– “[I]n addition to preparing a composition, an inventor must establish that
he ‘knew it would work,’ to reduce the invention to practice. This
suggests that a reduction to practice does not occur until an inventor, or
perhaps his agent, knows that the invention will work for its intended
purpose.” Id. at 593.
– Note the connection here with the “accidental anticipation” doctrine of
Seaborg and Tilghman v. Proctor: Just as unappreciated phenomena are
not considered prior art, so too they are not considered inventions for
establishing priority.
Multiple Interferences
• If the statutory language is read to preclude any consideration of
diligence here (why should it be?), then only the dates of conception
and RTP matter. Since ordinarily the first to RTP wins, perhaps
Inventor C should win.
• But … there are many other possible solutions. Note that the
statutory language doesn’t really seem to contemplate this problem.
In re Moore: Rule 131 Practice
• Before Dec. 1963: Moore prepares a new compound.
He does not yet know a use for it.
• Dec. 1963: A British chemistry journal publishes an
article describing the new chemical compound without
describing a use for it.
• Nov. 24, 1964: Moore files a US patent application
claiming the compound. Note: He must now have a
use for it.
• Q: Can Moore “antedate” the British journal by proving
he invented the compound first?
• A: Yes. In effect, the court allows a Rule 131 affidavit
to prove a date of “partial” invention.
In re Moore: Rule 131 Practice
• Before Dec. 1963: Moore prepares a new compound.
He does not yet know a use for it.
• Dec. 1963: An article in a British journal describes the
new compound without disclosing a use.
• Nov. 24, 1964: Moore files a US patent application
claiming the compound. Note: He must now have a
use for it.
• Q: Can Moore “antedate” the British journal by proving
he invented the compound first?
• A: Yes. In effect, the court allows a Rule 131 affidavit
to prove a date of “partial” invention. This rule applies
outside of interferences – i.e., where the alleged prior
art reference is NOT another inventor seeking to claim
patent rights over the same invention.
In re Moore: Rule 131 Practice
• The rule in Moore permitting proof of partial invention
to antedate a reference applies generally. In Stempel,
for example, the inventor was claiming a genus of
chemicals and a reference disclosed one species of
the genus. Stempel was allowed to antedate that
reference by showing that he had discovered that
particular species prior to the reference’s date.
• Note Rule 131 does not require corroboration, though
the affidavit must convince the PTO that the applicant
had invented prior to the date of the reference.
• Rule 131 practice uses the same standards for
determining dates of invention as in interferences:
RTP or conception + diligence prior to reference date.
International Considerations: Filing Date
• Filing date in a foreign country may constitute an
effective US filing date for prior purposes only (!!!)
pursuant to the Paris Convention as implemented in
35 USC § 119:
– An application filed in another Paris Convention
country “shall have the same effect as the same
application would have if filed in this country on the
[foreign filing date], if the application in this country
is filed within twelve months from the earliest
[foreign filing] date ….”
– Priority purposes only.
– 12 month window to file after first filing.
International Considerations: Proving
Date of Invention
• Old Rule: All inventive work outside of U.S. is
ignored.
• New Rule (§ 104): All inventive work inside U.S.
and any other WTO country (100+ countries) is
treated equally. Work in non-WTO countries is
still ignored (excepting special circumstances –
e.g., working in an non-WTO country on behalf of
the government of a WTO country).
International Considerations:
Geographic Restrictions on Prior Art
• While TRIPs forbids countries from discriminating as
to the place of invention for parties seeking patent
right, it does not forbids geographic discrimination in
defining prior art. Thus, the US still limits some prior
art categories based on geography:
– 102(a): Prior art inventions “known or used in this
country”
– 102(g)(2): Prior art inventions “made in this
country.”
– Cf. 102(e): Applies only to actual US filings.
Hilmer
• Jan. 24, 1957: Habicht files a patent application in
Switzerland disclosing but not claiming certain new
chemical compounds.
• July 31, 1957: Hilmer files an application for a German
patent claiming the compounds disclosed in Habicht’s
January 1957 Swiss application.
• Jan. 23, 1958: Habicht files his patent application in
the United States, which discloses but does not claim
the compounds.
• July 25, 1958: Hilmer applies for a U.S. patent on his
invention. Pursuant to § 119, he relies on his German
filing date as his effective U.S. filing date.
Hilmer
Habicht files in Switz.
Filing discloses but PTO wanted to use 119
does not claim
to backdate Habicht’s
chemicals:
disclosure for 102(e)
prior art purposes.
Jan. 24, 1957
July 31, 1957:
Hilmer files in Germany
Habicht files in US:
Jan. 23, 1958
July 25, 1958:
Hilmer files in U.S.
Pursuant to § 119, Hilmer can rely
on his German filing date as his
effective U.S. filing date.
Hilmer
Habicht files in Switz.
Filing discloses but Court holds that 119 can be
does not claim
used only for priority
chemicals:
purposes – i.e., if Habicht is Habicht files in US:
claiming the chemicals.
Jan. 23, 1958
Jan. 24, 1957
July 31, 1957:
Hilmer files in Germany
July 25, 1958:
Hilmer files in U.S.
Pursuant to § 119, Hilmer can rely
on his German filing date as his
effective U.S. filing date.