Pat Bar - Law Of Patents (Non-Mpep)

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Section 102 - changed by AIA

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YES

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102(a) [pre-AIA]

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"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"

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102(b) [pre-AIA]

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"A person shall be entitled to a patent unless—(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"

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102(c)

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A person shall be entitled to a patent unless - (c) he has abandoned the invention, or

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102(d)

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A person shall be entitled to a patent unless -(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

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If you
1) file in another country
2) wait 1 year or more to apply in the US
3) have the patent issue in the other country

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102(e)

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A person shall be entitled to a patent unless -(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; [1] or

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102(f)

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A person shall be entitled to a patent unless -(f) he did not himself invent the subject matter sought to be patented, or

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102(g)

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(g)(1) during the course of an interference conducted under section 135 orsection 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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You file an affidavit under..

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YOU FILE AN Affidavit UNDER 37 CFR 1.131, (to get behind dates?)

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MPEP Section for Experimental Use Factors

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MPEP 2133.03(e)(4)

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Is market testing experimental use?

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NOPE. It is a "commercial exploitation"

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Requirements for 102(d) - statutory bar for foreign patent

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1) Same Applicant (inventor)
2) Same invention
3) Foreign Patent Issued (=/= pblsh)
4) Too late to claim foreign Priority (12 months to claim util, 6 design)

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What does 102(e) really mean? (DOMESTIC 102(e))

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102(e) establishes prior art as of filing, as opposed to publishing. SO that non-available/searchable things can act as prior art

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What would foreign 102(e) be?

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DOESNT EXIST. If you file in a foreign country, it can't act as prior art until publishing abroad

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International 102(e)

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Nov 29, 2000. If filed prior, if fee, oath, translation all present at US national stage.
IF filed post, then is 102 prior art ONLY IF designates US and publishes in english does it get a 102(e) date. THIS IS FOR PUBLISHED APPLICATION.

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International 102(e), what if filed in language A and published in language B?

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Then publishes in english and gets the 102(e) date.

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102(g)(1)

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Abandoned, suppressed, concealed, can't be used as prior art.

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102(g)(2)

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Interference and ex parte.

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What is conception versus reduction to practice

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Idea and game plan. Idea and road map.
reduction to practice is "ive gotten there" - actual reduction to practice or constructive reduction to practice

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Dilligence - in an interference

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ONLY MATTERS FOR SECOND TO FILE> DOES NOT MATTER AT ALL FOR THE FIRST TO FILE. SENIOR PARTY IS THE FIRST TO FILE AND THE SECOND TO FILE IS THE JUNIOR PARTY. TIe goes to senior party.

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What does diligence require? How long?

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Diligence from before other's conception until reduction to practice. (not necessarily until filing)

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102(g)(2) ex parte

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without joining the claiming parties, another party can show that they had actually reduced invention to practice and had not abandoned, suppressed or concealed the invention.

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What Affidavit establishes that you conceived @ earlier than filing date?

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[1.131] - Affidavit or Declaration of prior invention.
131 Affidavit. You would use this to swear behind a novelty rejection. Can't swear behind a statutory bar because those don't care about date of invention. (so use for a,e,f,g)

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End of 1.131 Affidavit or declaration of prior invention

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Nafta Dec 8, '93
Jan 1, 1996 for WTO
Allows prior invention in other countries. proving conception outside of US for a 1.131 affidavit.

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35 USC 21(b)

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"when the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, ora Federal holiday wihthin the District of Columbia, the actio may be taken or the fee paid, on the next succeeding secular or business day"

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Sale of invention rights or assignments

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DO NOT TRIGGER 102(b) event.

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Pre-AIA secret sale

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Is still a sale and falls under on-sale bar

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CHANGE IN 102(a)(1)

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Act, use, sale can be ANYWHERE changed. Before it was just patented and printed publications. "Otherwise in the public domain" also anywhere. Prior art anywhere.

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New 102(a)(2)

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Applicants w/ filing dates anywhere in the world. Earliest effective date under us system, now includes foreign priority dates.

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Exceptions that you can get rid of under the AIA

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Anything from you if disclosed within 1 year. Or 3rd party disclosure that is predated by your predated disclosure.

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Where does it say you have to be an inventor

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OLD 102(f)
NEW 101 - "whoever invents or discloses"

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When does common ownership have to occur by?

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By the filing date

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Strange Exception under AIA for common ownership

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No time limit. can opt out of publication and keep secret indefinitely.

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Bridging pre / post AIA

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Even one new claim will infect rest and give post-AIA treatment. Exception with 102(g) may be used for interference. ALL CLAIMS then 102(g) treatment.

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PRE-AIA offer for sale in Canada

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Doesn't matter. Pre-AIA only cares about offers for sale in the US

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Pre-AIA offer for sale of rights

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NOT a 102(b) sale.

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Graham Factual Inquirires

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1) establish posa
2) Establish prior art
3) Difference between invention and prior art

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7 Rationales for obviousness

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1) combination of prior art by known methods to reveal predictable results
2) substitution of one element for another
3) Use of a known technique for a similar device
4) known technique applied to a known device that is ready for improvement
5) "obvious to try"
6) known work in one field prompting use in same / different field
7) TSM

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103 text

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Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

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Origin of obviousness rationales

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KSR v. Teleflex

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35 USC 112

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CLAIMS

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"The Specification"

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Refers to the non-claim text of the patent. IDea that patent is claims, specification, and drawings.

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How is a claim supported

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A claim is supported by being in the spec or in the drawing.

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Correct format for a markush group

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"selected from the group consisting of A, B and C."

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Can you shorten an antecedent basis? LIke "a electrically-charged anode with a 12 gauge whazzlemado" to "said anode"

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Yes, as long as it isn't confusing with another claimed part of the invention.

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HOw are design patent claims written?

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Only one claim. The ornamental design of _____________.

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Why do antecedent basis problems face objection?

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Because of indefiniteness. 112 paragraph b.

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Numerical Ranges and Amounts
Limitations

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2173.05(c). Examples
of claim language which have been held to be indefinite
are (A) “a temperature of between 45 and 78 degrees
Celsius, preferably between 50 and 60 degrees Celsius”;
and (B) “a predetermined quantity, for example, the
maximum capacity.

But can do a dependent that narrows a broader.

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Multiple dependent claims rules for what is proper and improper

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MPEP 608.01(n)

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What is the deal with 102(e (Pre-AIA)

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It is for non-published applications acting as prior art.

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Posta AIA 102(b)(2)(c)

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Gets rid of prior filings that are commonly owned. There is "collective ownership" if collaboration.

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Posta AIA sale and public use

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Has to be publicly - informing. People have to use and understand.

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What is the applicable date for the new 102(a) prior art system

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March 16, 2013 ; on or after

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Common ownership

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Earlier-filed, later-published patent applications may be removed as prior art for post-AIA applications if they are owned by the same person at the effective filing date, or if they are subject to an obligation of assignment to the same person at the effective filing date. This is more generous than the old law, which required the transfer of ownership to occur prior to the date the invention was made. Common ownership includes collaborations under joint research agreements, provided certain conditions are met.

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What rule allows you to roll over a deadline to the next business day?

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35 USC 21(b)