The Novelty Requirement II

The Novelty Requirement IIThe Novelty Requirement II

Class Notes: February 4, 2003Class Notes: February 4, 2003

Law 677 | Patent Law | Spring 2003Law 677 | Patent Law | Spring 2003

Professor WagnerProfessor Wagner

2/04/032/04/03 22Law 677 | Spring 2003Law 677 | Spring 2003

Today’s AgendaToday’s Agenda

1.1. Derivation {35 U.S.C. § 102(f)}Derivation {35 U.S.C. § 102(f)}

2.2. Priority & Secret Prior Art {35 U.S.C. § Priority & Secret Prior Art {35 U.S.C. §

102(g)}102(g)}


DerivationDerivation

35 U.S.C. § 102(f)35 U.S.C. § 102(f)A person shall be entitled to a patent A person shall be entitled to a patent

unless . . .unless . . .

(f) (f) he did not himself invent the subject he did not himself invent the subject matter sought to be patented . . .matter sought to be patented . . .

This rule is the ‘derivation’ principle: This rule is the ‘derivation’ principle: you you cannot patent an invention you cannot patent an invention you derivedderived from another.from another.


DerivationDerivationGambro Lundia v Baxter HealthcareGambro Lundia v Baxter Healthcare (Fed. Cir. 1997) (Fed. Cir. 1997)

• What are the two components of a finding of derivation?• What is the standard for how much information must be

communicated?

• Note: why require corroboration of conception? (What is the practical effect of the corroboration requirement on inventors’ testimony?)

• Is there any real difference between the communication standard used by the D.Ct. and the Gambro court? (What is it?)

• What happens if you prove prior conception by another, but the communication does not enable?


DerivationDerivation

What is the policy behind the derivation What is the policy behind the derivation rule?rule?

• Contrast the rule with the Inventorship requirement.

• Consider the ‘bus’ hypothetical on p. 467. o Can you think of reasons we might want to allow

the eavesdropper to get a patent on the invention?

o What if the eavesdropper files a patent application for the invention? What happens to the true inventor?


PriorityPriority35 U.S.C. § 102(g)35 U.S.C. § 102(g)A person shall be entitled to a patent unless . . .A person shall be entitled to a patent unless . . .

(g)(1) during the course of an interference … another inventor involved therein establishes … that before such before such person’s invention thereof the invention was made by person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or such other inventor and not abandoned, suppressed, or concealedconcealed, 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 In determining priority of invention under this subsection, there shall be considered not only the subsection, there shall be considered not only the respective dates of conception and reduction to practice respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.practice, from a time prior to conception by the other.


PriorityPriority

Section 102(g) establishes the US system Section 102(g) establishes the US system as a “first to invent” system.as a “first to invent” system.• Virtually all of the rest of the world has a

“first to file” system.

Consider the relative merits of each Consider the relative merits of each system w/r/t.. system w/r/t.. • Determining the ‘real’ inventor;• Administrative difficulties;• Incentives on the innovation process;• Should we switch to first-to-file?


PriorityPriority

The Basic Rule of PriorityThe Basic Rule of Priority

RuleRule: First to reduce to practice = priority• Exception A: Prior conception + diligence

until reduction to practice.• Exception B: The original inventor

abandons, suppresses, or conceals her invention.


PriorityPriority

Inventor AInventor A Inventor BInventor B

ConceptionConception Jan. 1, 2001Jan. 1, 2001 Jan. 2, 2001Jan. 2, 2001

Reduction to Reduction to PracticePractice Jan. 3, 2001Jan. 3, 2001 Jan. 4, 2001Jan. 4, 2001

Filing DateFiling Date Jan. 5, 2001Jan. 5, 2001 Jan. 4, 2001Jan. 4, 2001

Priority?Priority?


PriorityPriority


Priority: IssuesPriority: Issues

Fiers v RevelFiers v Revel (Fed.Cir. 1993) (Lourie) (Fed.Cir. 1993) (Lourie)• Note: conception is a question of law (court Note: conception is a question of law (court

is free to review de novo on appeal)is free to review de novo on appeal)• The court adopts a particularistic definition The court adopts a particularistic definition

for conception of a chemical compound.for conception of a chemical compound.• What is it?• Why do you think Judge Lourie (PhD Chemist)

adopts this definition? (Do you agree with him?)

• Should enablement be irrelevant to this Should enablement be irrelevant to this issue, as the Court says?issue, as the Court says?



Burroughs Wellcome v Barr Labs.Burroughs Wellcome v Barr Labs. (Fed. (Fed. Cir. 1994) (Mayer)Cir. 1994) (Mayer)

• What is the real issue here? (Why?)• What was Broder’s and Mitsuya’s

contribution to AZT?• Why is this insufficient for joint invention?• When will conception and reduction to

practice coincide? (Why?)



You conceive of an invention (cold You conceive of an invention (cold fusion for producing electricity) on fusion for producing electricity) on January 1, and begin testing to attempt January 1, and begin testing to attempt to reduce to practice.to reduce to practice.a) On February 1, you determine the invention

will work to produce electricity.b) On February 1, you determine the invention

will not generate electricity without the addition of a new Compound X.

What is your date of conception in Case What is your date of conception in Case (a)? Case (b)?(a)? Case (b)?



Reduction to PracticeReduction to Practice

DSL Dynamic SciencesDSL Dynamic Sciences (Fed. Cir. 1991) (Fed. Cir. 1991)• Why was the testing sufficient to reduce the

couplers to practice?• What is the rule for showing reduction to

practice?• An embodiment actually worked for its

intended purpose.

Note: ‘actual’ versus ‘constructive’ RTP.Note: ‘actual’ versus ‘constructive’ RTP.



Abandonment, Suppression, ConcealmentAbandonment, Suppression, Concealment

Fujikawa v WattanasinFujikawa v Wattanasin (Fed. Cir. 1996) (Fed. Cir. 1996) (Clevenger)(Clevenger)• The question here is whether the 17/15

month delay between RTP and filing is “abandonment”.o Why is ‘spurring’ disfavored by the law?o What kind of facts would be suggestive of

suppression or concealment?

• Assume you abandon your invention. Can you later obtain a patent on it? (What is your date of conception/RTP?)o Note the problem of § 102(c).


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The Novelty Requirement II

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