Written Description and Novelty - Berkeley Law

Written Description and Novelty - Berkeley Law

Novelty and Statutory Bars Intro to IP Prof Merges 1.22.09 Novelty 102 A person is not entitled to a patent if the invention was: in the prior art (as defined by 102 (a), (e), (g)) barred under 102 (b), (c), (d)

CLAIM 1: ELEMENTS Rotating handle at end of bar U-shaped bar Cutting element attached to bar Base, with passageway Sample Publication

Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________ ______________various cutting bar shapes: Uround, and____ . shaped, ______________ _______ Exciting new cutting elements : stainless steel blades, tightened wire , ___________ ________

____________________ attached to the bar . The wire slides into a convenient passageway in the base. For tightened wire designs, tightening can be achieved by rotating the handle. Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________

______________various cutting bar shapes: U-shaped, round, and____ . ______________ _______ Exciting new cutting elements : stainless steel blades, tightened wire , ___________ ________ ____________________

NO PATENT GRANTED NOVELTY REQUIREMENT NOT MET: attached to the bar. The wire slides into a convenient passageway in the base. For tightened wire designs,

tightening can be achieved by rotating the handle. Claim Elements Claim Elements in Publication Rotating handle at end of bar Rotating handle at end of bar

Cutting element attached to bar Cutting element attached to bar Base, with passageway Base, with passageway U-shaped bar

U-shaped bar Sample Publication: Revised Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________ ______________various cutting bar shapes: Uround, and____ . shaped,

______________ _______ Exciting new cutting elements : stainless steel blades, tightened wire , ___________ ________ ____________________ attached to the bar . The wire slides into a convenient passageway in the base. Invention Compared with Prior Art Rotating handle Cutting element Base, with U-shaped at end of bar

attached to bar passageway bar Smith Article Jones Patent Adams Slicer X

X X X X X X

INVENTION NOVELTY REQT MET: NOT ANTICIPATED PATENT GRANTED Novelty (Anticipation) [ 102(a)]

Versus Statutory Bars [ 102(b)] Novelty/Anticipation concerned with NEWNESS is it original to the patent applicant/patentee? Statutory Bars concerned with TIMELINESS did the inventor file soon enough? Critical Concept: the Critical Date

The Invention Date Critical Concept: the Critical Date The Prior Art The Invention Date

Earlier Invention, Earlier Critical Date, LESS PRIOR ART The Prior Art The Invention Date

Novelty Critical Date Example Conception: Summer 1886 Reduction to practice: 7/12/1886 Filed: 6/7/1889

Unpacking the invention date Rosaire v. Baroid Palestine, Texas Horvitz publications Horvitz, L., 1939. On Geochemical Prospecting. Geophysics, V. 4,

No. 3, pp. 210-228. Horvitz, L., 1945. Recent Developments in Geochemical Prospecting for Petroleum. Geophysics, V. 10, pp. 487-493. Horvitz, L., 1950. Chemical Methods. In: J.J. Jakosky (Editor), Exploration Geophysics (2d ed.). Trija Publishing, Los Angeles, pp. 938-965. Horvitz, L., 1969. Hydrocarbon Geochemical Prospecting After Thirty YearsHorvitz, L., 1972. Vegetation and Geochemical Prospecting for Petroleum. AAPG Bull., V. 56, pp. 925-940. Horvitz, L., 1985. Near-surface Hydrocarbons and Nonhydrocarbon Gases in Petroleum Exploration. Presented at: Asso.

Petrol. Geochem. Explor. AAPG Rocky Mountain Section, Denver, Colo., June, 1985. Rosaire v Baroid Section 102(a): 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. (a) The invention was known or used by others in this country - Note the national limitation here - What does it mean to be known or used? - Why was Teplitz teams use not enough by itself to anticipate?

Rosaire (contd) Rosaires argument Top of p. 404 Courts response -- Rosaire v Baroid With respect to the argument advanced by appellant that the lack of publication of Teplitz's work deprived an alleged infringer of the defense of

prior use, we find no case which constrains us to hold that where such work was done openly and in the ordinary course of the activities of the employer, a large producing company in the oil industry, the statute is to be so modified by construction as to require some affirmative act to bring the work to the attention of the public at large. In re Hall

Section 102(b) case But: same standard for publication under 102(a) and 102(b) See Rosaire case Reissue patent application Protest during reissue Foldi Thesis -- Freiburg

Freiburg Evidence of publicness Index cataloguing Open to public Novelty vs. statutory bars Novelty: who was first? (Measured from date of invention) Statutory bar: did you file on time?

(Measured from date of filing) 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 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 . . . . 102. Novelty and loss of right to patent A person shall be entitled to a patent unless before the invention thereof by the applicant for

patent, or (a) the invention was known or used by others (b) the invention was patented or described in a printed publication , more than one year prior to the date of the application for patent in the United States, or . . . .

Statutory bars v. novelty 102(a) Novelty; 102(b) Statutory bars Different as to (1) who may create prior art; (2) the categories of prior art; and (3) the critical date for determining prior art Critical Concept: the Critical Date

The Invention Date Critical Concept: the Critical Date The Prior Art The Invention

Date Earlier Invention, Earlier Critical Date, LESS PRIOR ART The Prior Art The Invention Date

Statutory Bar Dates Jones Patent Application Jones Jones

One Year Grace Period Oct. 1995 Dec. 19, 1995 One Day Gap Section 102(b) Bar Dec. 19, 1996 Dec. 20, 1996

Statutory Bars 102(b), (c), (d) An inventor loses the right to patent if, more than one year prior to the applicants filing, the invention was:

patented by another anywhere patented by the applicant in a foreign country-- d described in a printed publication anywhere in public use in the US on sale in the US (strict identity not required) Egbert v. Lippmann Statutory bars v. novelty 102(a) Novelty; 102(b) Statutory bars

Different as to (1) who may create prior art; (2) the categories of prior art; and (3) the critical date for determining prior art Egbert v. Lippmann Why not a novelty case? What are the essential facts: use a timeline Corset

Springs Egbert (contd) Conception, Jan May 1855 R to P: May, 1855 (?) 1858: Second pair of springs Patent app filed: March 1866 Egbert Only 1 used enough?

Non-informing public use Why enough to constitute a bar? Conclusion The inventor slept on his rights for 11 years . . . Samuel F. Miller, on

Court 18601890 Miller Dissent It may well be imagined that a prohibition to the party so permitted [to use the springs] against her use of the steel spring to public observation, would have been supposed to be a piece of irony. 104 U.S. (14 Otto), at 339.

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