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3rd party statutory bar activity

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'Suaudeau's use was public, and it was not experimental in a manner that saves ... find public uses by third parties in circumstances where the use would be hard ... – PowerPoint PPT presentation

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Title: 3rd party statutory bar activity


1
3rd party statutory bar activity
  • Patent Law
  • 3.4.08

2
Cleanup issues
  • Atlanta Attachment on-sale or public use?
  • Apparently the former

3
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.

4
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 . . . .

5
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 . . . .

6
When would a statutory bar invalidate, but not
102(a)?
7
When would a statutory bar invalidate, but not
102(a)?
  • When 1 a qualifying reference enters the prior
    art 2 after the applicants date of invention,
    but 3 more than 1 year prior to applicants
    filing date

8
Statutory Bars and 3rd party activity
  • Are the same policies implicated?
  • Look again to unique situations where only a
    statutory bar will invalidate the patent

9
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)

10
Novelty and the economics of search
  • Page 417
  • How did defendants find out about prior art in
    Baxter and WL Gore?
  • Interference, Baxter
  • Public use (?) by Budd, WL Gore

11
Baxter
  • What category of section 102 prior art is at
    issue here?

12
(No Transcript)
13
Issues on appeal
  • Was Suaudeau Itos use public?
  • Was it experimental not yet completed?
  • Different standards for 3rd party
    experimentation, vs inventors own
    experimentation?

14
Holding
  • Suaudeaus use was public, and it was not
    experimental in a manner that saves Cullis
    patent. -- p. 572

15
Baxter International v. Cobe Labs, Inc.
  • Q How is this case different from Rosaire?
  • A They are similar in that the courts in both
    find public uses by third parties in
    circumstances where the use would be hard to
    discover by the applicant. There are two
    differences

16
Distinguishing Rosaire
  • (2) Rosaire used the invention in the ordinary
    course of business. Here Suaudeau used the
    invention in a lab. Its not clear that it was
    ever used in the ordinary course of a business
    (even accepting that research could be a
    business).
  • (1) Baxter is a statutory bar case. Thus, the
    prior public use cannot be defeated by proof of
    earlier invention it creates problems for Itos
    patent application too.

17
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?

18
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 inventors own sales were
    probably experimental, but the thiefs was not.
    Perhaps, however, the inventor could argue that
    the invention was not yet ready for patenting
    at the time of the thiefs sale.

19
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?

20
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.

21
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 Croppers process.

22
W. L. Gore Assoc. v. Garlock, Inc.
  • Q Why doesnt Gore have a novelty problem?
  • A The process wasnt publicly known, so it
    doesnt qualify under 102(a). Theres no 102(e)
    issue. Croppers process could not be considered
    under 102(g)(2) because Cropper was
    concealing/suppressing the process.

23
Gore
  • Q Why isnt Croppers 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 isnt Budds use of the machine a bar?
  • A Budds use of the machine is not a public
    use of the process because he kept the process
    secret.

24
  • Q Could Cropper have applied for a U.S. patent
    in 1970?
  • A No!!! An inventors 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.

25
Exp use in 3rd party cases??
  • Suaudeaus use was public, and it was not
    experimental in a manner that saves Cullis
    patent. -- p. 572
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