AIA: Hypothetical #5

• Inventor invents and publicly discloses Invention ABC by selling hundreds of items
embodying the invention to customers in Brazil on 01 Feb. 2014.

• Competitor publishes a complete description of Invention ABC in the Boston Globe on

01 Mar. 2014.

• Inventor files a patent application claiming Invention ABC on 01 July 2014.

• What result?
• Competitor’s disclosure is removed from the prior art by § 102(b)(1)(b) because of
the prior public disclosure by Inventor.
• Inventor’s own prior disclosure is removed from the prior art by § 102(b)(1)(A).
• Thus, Inventor has a grace period which begins on 01 Feb. 2014; meaning that
Inventor must file by 01 Feb. 2015.

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 35 U.S.C. § 102(a)(2)

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

***
(2) the claimed invention was described in a patent . . . , or in [a published]
application for patent . . . , in which the patent or application, as the case
may be, names another inventor and was effectively filed before the
effective filing date of the claimed invention.

168
 35 U.S.C. § 102(a)(2)

B files A files B’s patent application is

published or B’s patent
issues

169
 35 U.S.C. § 102(b)(2)(A)

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—

A disclosure shall not be prior art to a claimed invention under subsection
(a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the
inventor or a joint inventor;

Technically, no one year grace period for § 102(b)(2)

provisions, but may still have issues under § 102(a)(1) and
§ 102(b)(1).

170
 35 U.S.C. § 102(b)(2)(A)

OK!

B files A files B’s patent application is

published or B’s patent
issues

B took idea from

A
171
 35 U.S.C. § 102(b)(2)(B)

(B) the subject matter disclosed had, before such subject matter was
effectively filed under subsection (a)(2), been publicly disclosed by
the inventor or a joint inventor or another who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint
inventor;

172
 35 U.S.C. § 102(b)(2)(B)

No one gets the

patent!

One year (§§ 102(a)(1) and (b)(1))

OK!

A discloses B files A files B’s patent application is

published or B’s patent
issues
B discloses (within one year
of B’s filing date)
B’s disclosure is prior art to A, but not
to himself, so B wins.
First inventor to disclose!
173
 35 U.S.C. § 102(b)(2)(B)

OK!

B files A files B’s patent application is

B (or X) published or B’s patent
discloses but issues
got from A

derivation problem for B!

174
 Cumulative Hypo #1
Annie files an application claiming compound X on 01 June 2013.

Consider the following:

• May 2013 → Annie published her own article in Rapid Chemical

Communications which discloses X.

This is removed from the prior art under § 102(b)(1)(A).

• April 2013 → Dastardly stole Annie’s laboratory notebook and placed X on

sale.
This is removed from the prior art under § 102(b)(1)(A).

• April 2013 → Dastardly filed a U.S. patent application using Annie’s notes to
prepare the WD. This application published 18 mos. after its EEFD.
This is removed from the prior art under § 102(b)(2)(A).

175
 Cumulative Hypo #2
Barry publicly discloses his invention in an article in Organometallics on 01 Jan.
2015 and eventually files an application on 31 Dec. 2015.

Consider the following:

• 01 Feb 2015 → Irene Independent publishes her own article in Inorganic
Chemistry based on her own research on the identical subject matter.

This is removed from the prior art under § 102(b)(1)(B).

• 01 Mar 2015 → Irene files a patent application based on her own research.
This application ultimately publishes.
This is removed from the prior art under § 102(b)(2)(B). Note: First filer (Irene)
loses patent to second filer (Barry) because the second filer (Barry) was the first
to publicly disclose. So is “FITF” a misnomer?

176
In re Robertson (Fed. Cir. 1999)

177
In re Seaborg (C.C.P.A. 1964)

178
Fermi process

179
 Schering v. Geneva Pharms.
TIMELINE:
04 Aug. 1981: ‘233 patent issue date
• Covered loratadine
• Didn’t disclose DCL (loratadine metabolite)
15 Feb. 1984: EEFD of ‘716 patent
• Construed to cover DCL (loratadine metabolite)
19 June 2002: ‘233 patent expired

180
 In re Hafner
TIMELINE:
• 1959: Hafner files German patent apps on new chemicals; no use is described

• May 1960: Arnold reference discloses how to make the chemicals (but not how to
use them)

• Aug 1960: Hafner files in the U.S.; no use is disclosed. App is rejected under §112

• 1961: One of Hafner’s apps publishes in Germany

• 1964: Hafner refiles in the U.S. The app is rejected under § 102, citing both the
Arnold reference and Hafner’s published 1961 German app although neither prior
art reference discloses a use which would satisfy § 112

181
 Hafner Aligns With the Bar Against
Patents for Old Inventions

• Acetylsalicylic acid → Invented in 1890s and found to be a pain

reliever/fever reducer.

• Suppose in 1995 → Inventor finds that aspirin treats razor bumps and seeks a
patent on the composition (i.e., acetylsalicylic acid).

• Acetylsalicylic acid can’t be patented even though the prior art didn’t
recognize the newly-discovered razor bump use.

• So the applicant can only obtain a “method of use” claim (e.g., “A method of
using aspirin to treat razor bumps comprising . . . .”)

• Otherwise no one could take an aspirin without a license!

182
 Anticipatory Enablement:

As of the inventor’s filing date, could a PHOSITA have combined the

teachings of the asserted prior art reference with preexisting knowledge
to make the claimed invention without undue experimentation?

183
 More on Anticipatory Enablement:

• Consider a chemical journal from Jan. 1985 that discloses a picture of

compound X but no discussion of how to prepare it. X is never
mentioned in the chemical literature . . . .
• Suppose Inventor A seeks to patent X in Feb. 1986 . . . .
• Suppose Inventor B seeks to patent X in Feb. 2017 . . . .

184
 More on Anticipatory Enablement:

The PHOSITA’s knowledge and skill evolve over time (i.e., the PHOSITA
becomes smarter with time). Timothy R. Holbrook, Patent Disclosures and
Time, 69 VAND. L. REV. 1459, 1486 (2016).

So what was nonenabling earlier in time can become enabling later in time!

185
 Anticipatory Enablement

• The CAFC has held that one who asserts a lack of novelty (either the
patent examiner or an accused infringer challenging validity in patent
litigation) can PRESUME that a prior art reference is enabling.

• Thus, the burden of proof is on the patent applicant or patentee to

prove otherwise (i.e., what the PHOSITA was incapable of making in
the past)

• Doesn’t proving what the PHOSITA couldn’t do in the past seem

problematic? See Sean B. Seymore, Rethinking Novelty in Patent Law,
60 DUKE L.J. 919 (2011).

186