3rd party statutory bar activity

Patent Law

10.06.2011

Cleanup issues

• Experimental use and reduction to practice

Chisum on Patents

Chisum on experimental use

The better and prevailing view is that experimental use can indeed continue even after the invention has been completed and reduced to practice as that term is used in patent law.  Unfortunately, many Federal Circuit decisions articulate the former, less-preferred position, to wit, that experimental use cannot extend beyond reduction to practice. This leads to considerable confusion.

§ 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 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

(b) the invention was patented [etc]… more than one year prior to the date of the application for patent in the United States, or . . . .

§ 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 . . . .

Many references are BOTH 102(a) and 102(b) prior art

• Examiners will usually cite a reference as a 102(b) reference – because the inventor cannot leapfrog backward by showing earlier invention

• No “swearing behind” 102(b) references

Back to the “Critical Date”

One year before filing

Inventor’s own acts

Filing Deadline (acts + 1 year)

Inventor’s own acts

Filing Deadline (acts + 1 year)3rd party acts

One year before filing

3rd party acts

Inventor’s own acts

Filing Deadline (acts + 1 year)

3rd party acts

When would a statutory bar invalidate, but not 102(a)?

• When [1] a qualifying reference enters the prior art [2] after the applicant’s date of invention, but [3] more than 1 year prior to applicant’s filing date

When would a statutory bar invalidate, but not 102(a)?

One year before filing

3rd party acts

Filing

Inventor/applicant’s invention date

One year before filing

3rd party acts

Filing

Statutory Bars and 3rd party activity

• Are the same policies implicated?

• Yes and no –

– “Hurry up and file” – yes– Grace period – you have 1 year - NO

Practicalities

• Some 3rd party prior art may be difficult/expensive to find– Rarely during prosecution– Labor-intensive discovery

• On sale, some public use; compare to “known or used [publicly]” under 102(a)

Novelty and the economics of search

• How did defendants find out about prior art in Baxter and WL Gore?

– Interference, Baxter– Public use (?) by Budd, WL Gore

Baxter

• What category of section 102 prior art is at issue here?

Baxter

5.14.75: Cullis

Critical Date

Cullis Invention

Date

Filing Date: 5.14.76

Baxter

Suaudeau and Ito public (?) use activity

5.14.75: Cullis

Critical Date

Cullis Invention

Date

Filing

WL Gore v. Garlock

Cropper on sale/in public use activity

Gore Critical Date

Gore Invention

Date

Baxter timeline

Suaudeau and Ito build centrifuge at NIH

5.14.75: Cullis

Critical Date

5.14.76: Cullis Files Pat App

Issues on appeal

• Was Suaudeau & Ito’s use “public”?

• Was it “experimental” – not yet completed?

– Different standards for 3rd party experimentation, vs inventor’s own experimentation?

Holding

“Suaudeau’s use was public, and it was not experimental in a manner that saves Cullis’ patent.” -- p. 572

Hypothetical

• Q: Inventor conceives of a new widget on 1/1/2000. Thief steals the plans, builds the widget and, unknown to the inventor, sells a copy on 2/1/2000. The inventor meanwhile sells some prototypes to determine if the new widget works. She requires customers to report on the performance of the invention. The inventor is satisfied with the tests on 3/1/2001 and then files an application. Can she get a patent?

Hypothetical

A: Probably not. Sales by thieves do start the one-year clock of 102(b) running. Evans Cooling Sys. v. General Motors Corp., 125 F.3d 1448 (Fed. Cir. 1997). Here the inventor’s own sales were probably experimental, but the thief’s was not. Perhaps, however, the inventor could argue that the invention was not yet “ready for patenting” at the time of the thief’s sale.

Baxter: Newman dissent

• Opposes “secret prior art”– See Pitlick p 609

• 3rd party 102(b) art should be narrowly limited

– “liberal” test of publicness

• Consistent with policies?

WL Gore v Garlock

W. L. Gore & Assoc. v. Garlock, Inc.

• 1966: John Cropper of New Zealand develops a machine for producing stretched and unstretched PTFE thread seal tape.

• 1967: Cropper sends a letter to a company in

Massachusetts offering to sell his machine, describing its operation, and enclosing a photo. Nothing comes of that letter. “There is no evidence and no finding that the present inventions thereby became known or used in this country.”

Gore• 1968: Cropper sells his machine to Budd

in US but requires Budd to keep the operation of the machine a secret, which Budd does. Budd uses the machine to produce seal tape.

• May 21, 1970: Gore files a patent

application on a process for stretching PTFE material that is similar to Cropper’s process.

W. L. Gore & Assoc. v. Garlock, Inc.

• Q: Why doesn’t Gore have a novelty problem?

• A: The process wasn’t publicly known, so it doesn’t qualify under 102(a). There’s no 102(e) issue. Cropper’s process could not be considered under 102(g)(2) because Cropper was concealing/suppressing the process; and also not invented “in the US”.

GoreQ: Why isn’t Cropper’s 1967 letter an offer to

sell? A: Probably because he was not offering to sell

the process, only the machine. Moreover, as we know from his later activity with Budd, the sale of the machine would have been subject to a secrecy restriction.

Q: Why isn’t Budd’s use of the machine a bar? A: Budd’s use of the machine is not a “public”

use of the process because he kept the process secret.

• Q: Could Cropper have applied for a U.S. patent in 1970?

• A: No!!! “[A]n inventor’s own prior commercial use, albeit kept secret, may constitute a public use or sale under § 102(b), barring him from obtaining a patent.” Woodland Trust v. Flowertree Nursery, 148 F.3d 1368, 1370-71 (Fed. Cir. 1998). Also Pennock supports this rule.

Is “3rd party” 102(b) art different from “first party” art?

“If Budd offered and sold anything, it was only tape, not whatever process was used in producing it. Neither party contends, and there was no evidence, that the public could learn the claimed process by examining the tape. If Budd and Cropper commercialized the tape, that could result in a forfeiture of a patent granted

them for their process on an application filed by them more than a year later.”

See Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 68 USPQ 54 (2d Cir.1946). There is no reason or statutory basis, however, on which Budd's and Cropper's secret commercialization of a process, if established, could be held a bar to the grant of a patent to Gore on that process.

This court found the Gore third party could not both elect to avoid the patent system and still invoke that system to erect a third-party public use bar to an inventor who disclosed the invention for patenting. Thus, the secret activity in Gore did not constitute public use.

-- Eolas Technologies Inc. v. Microsoft Corp.399 F.3d 1325, 1334-35 (Fed.Cir.2005).

Exp use in 3rd party cases??

“Suaudeau’s use was public, and it was not experimental in a manner that saves Cullis’ patent.” -- p. 572

Some bizarre twists

• Usually, a patentee argues in favor of experimental use to qualify for an exception to the statutory bar

• In cases such as Baxter, patentee argues that a third party was experimenting, so no statutory bar

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)]

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—

Requirements for Grace Period

(A) 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.]

Metallizing Engineering Lives

• As to the inventor/applicant, a non-informing public use is a “disclosure”

– New 102(a)(1) “in public use” incorporates all existing caselaw

– “Disclosure” in 102(b) refers generically to anything in prior art under new 102(a)

Same as to 3rd party prior art

• Third party non-informing uses are NOT “public uses” under old section 102(b); they are therefore NOT disclosures under new 102(b) and therefore do not trigger the 1 year grace period – they are NOT in the prior art

What about inventor’s non-informing public use?

• These are in the prior art; but they trigger a 1 yr grace period

• Inventor’s OWN ACTS of disclosure (including non-informing public use) give inventor 1 year to apply

But can inventor’s non-informing public use save

him/her from 3rd party disclosures?

• NO!

• Only a “PUBLIC disclosure” by the inventor/applicant can do this

[Disclosure made 1 year or less before filing is NOT prior art if – ]

[T]he subject matter disclosed [by a third party] had, before such disclosure, been publicly disclosed by the inventor [less than 1 year before filing]

Non-informing public use by inventor

• A “disclosure” under the new Act

• But NOT a “public disclosure”