Egbert Timeline

• Jan-May 1855: Samuel Barnes gives his friend Frances Lee a pair of corset
springs that he invented. For years, Egbert wears both this pair and a 2d pair
received from Barnes in 1858.

• 1858: Barnes gives Frances a SECOND SET of springs.

• ???: Barnes and Lee “intermarry”

• 1863: Barnes shows his invention to Sturgis

• Mar. 1864: CD under Patent Act of 1839 (2y grace period)

• Mar. 1866: Barnes applies for a patent on his improved corset springs

• Later: Samuel Barnes dies; Francis Lee [Barnes] remarries [Egbert]

• Still later: Francis Egbert sued D for infringement of her patent on Barnes’
invention.

141
 EX PARTE KUKLO
(B.P.A.I. 1992)
¡ Applicants filed a patent application for a dye laser on 22 Sept. 1986

¡ M ore than 1 year before filing, the device was open to display to laboratory
visitors. NDAs were not provided.

¡ The exam iner rejected the application under § 102(b) for prior public use.

¡ The applicants argued that “the m inim al viewing on occasion by visitors

under escort does not reveal anything significant about the dyes . . . . [T]he
public [couldn’t] view the structural features of the invention because the
structure is an assem blage of black boxes.”

¡ Board: Affirm ed. That the public didn’t see the inner workings of the device
or understand the significance and the technical com plexities of the
invention isn’t required to trigger the public use bar.

142
TP LABS. V. PROFESSIONAL POSITIONERS
(Fed. Cir. 1984)
¡ An EXPECTATION OF CONFIDENTIALITY was enough to negate a PU.

¡ The inventor was a dentist who installed the inventive orthodontic appliance
in several of his patients. Although the inventor had NOT obtained any
express prom ise of confidentiality from his patients, the use was not
considered “public” because the dentist-patient relationship itself was
tantam ount to an express vow of secrecy.

¡ “So an agreem ent of confidentiality, or circum stances creating a sim ilar

expectation of secrecy, m ay negate a “public use” where there is not
com m ercial exploitation.”

143
 METALLIZING ENG’G V. KENYON
(2d. Cir. 1946)
¡ A NON-COM M ERICAL PRIVATE USE,
UNDER THE INVENTOR’S CONTROL
will not invoke § 102

¡ But a SECRET, COM M ERCIAL USE by

the inventor TRIGGERS § 102 (yet the
sam e type of activity by a third party
W ILL NOT trigger it)

¡ Hand’s forfeiture doctrine: “[I]t is a

condition upon an inventor ’s right to a
patent that he shall not exploit his
discovery com petitively after it is ready
for patenting; he m ust content him self
with either secrecy, or legal m onopoly.”

¡ W hat’s Hand’s policy rationale?

144
SEYMORIUM

Suppose I invent a new elem ent nam ed

Seym orium . It’s a white powder. I
take a vial of it to an Am erican
Chem ical Society National M eeting in
Atlanta. I display it at a public
session with no written or oral
description about how it’s m ade, etc.
Clearly I m ake no effort to keep the
invention secret, and I don’t require
attendees to sign a confidentiality
agreem ent. Just over a year later I file
a patent application.

Was the display a patent-defeating

public use?

145
 OPINIONS ON SEYMORIUM

Prof. Holbrook (Emory) Prof. Karshtedt (GW)

Prof. Seymore (ND) Prof. Fishman (Vanderbilt)

146
 In re Klopfenstein

Timeline:

147
148
Alexander Milburn Co. v. Davis Bournonville Co.

TIMELINE:

149
 PGPUBS
(pre-grant publication of patentapplications)

¡ Before 1999, all patent apps were kept secret unless/until a patent issued.

¡ The 1999 enactment of the American Inventor ’s Protection Act (AIPA)

introduced 18-month publication of most pending U.S. patent apps.

¡ EXCEPTION: If the applicant agrees not to file abroad (i.e., no foreign

filing license), the app is still kept SECRET until the patent issues.

¡ Since a PGPUB “sees the light of day” 18 mos. after the earliest effective
filing date:
§ It’s available for use as §102(a)(2) prior art on the 18 mo. pub date.
§ This is true even if the application GOES ABANDONED after publication.
§ The reference date is the earliest effective filing date.

150
 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.

151
 AIA § 102(a)(2) Problem
TIMELINE:

12 Dec 2012: Beta invents X

14 Dec 2012: Acme invents X
15 June 2013: Acme files a patent application describing X in complete detail
20 June 2013: Beta files a patent application disclosing and claiming X
15 Dec 2014: Acme’s application publishes

What is the effective date for Acme’s disclosure as a prior art reference?
15 June 2013

COMMENTS:
• Under these facts, Acme’s disclosure anticipates Beta’s patent application
• Whether Beta in fact invented before Acme is irrelevant
• The only way that Beta can remove Acme’s disclosure as PA is if a
§ 102(b)(2) exception applies (i.e., if Acme derived from Beta)

152
AIA Grace Period Exceptions Under § 102(b)

153
 AIA: Exceptions/Grace Period
Prior 102 (a)(1) 102 (a)(2)
art in Printed publications, public 1st filed U.S. patent
102(a) uses, etc. application by another

Exceptions 102 (b)(1) 102 (b)(2)

in (limited to 1 year only!)
102(b) (A) 1st filer derived invention
(A) Any “disclosure” coming from 2d filer.
from the applicant (“directly
or indirectly”) (B) 1st filer filed after “public”
(B) Disclosures by others disclosure by applicant/2d
made after a “public” filer.
disclosure by the applicant.
(C) Common assignee

154
 AIA: Exceptions/Grace Period

• As shown by the chart, the subparagraphs (A) and (B) are similar:

• The (A) subparagraphs each allow exclusion of information that came

directly or indirectly from the applicant, including even an earlier filed
application that was derived from the applicant → “A” events

• The (B) subparagraphs allow exclusion of independently discovered

material if the applicant was first to “publicly disclose” → “B” events

155
35 U.S.C. § 102(a)(1)

One year

B offers to
A files
sell

156
 35 U.S.C. § 102(b)(1)

(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE
EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—
A disclosure made 1 year or less before the effective filing date of a
claimed invention shall not be prior art to the claimed invention
under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by
another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, 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.

157
35 U.S.C. § 102(b)(1)(A)

One year

OK!

B offers to
A files
sell

B takes the idea from

A (derivation) 158
35 U.S.C. § 102(b)(1)(A)

One year

OK!

A offers to
A files
sell

159
 35 U.S.C. § 102(b)(1)

(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE
EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—
A disclosure made 1 year or less before the effective filing date of a
claimed invention shall not be prior art to the claimed invention
under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by
another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, 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.
160
 35 U.S.C. § 102(b)(1)(B)

One year

OK!

A discloses B offers to
(pubic use? A files
sell
On sale?)

161
 35 U.S.C. § 102(b)(1)(B)

One year

OK!

C discloses B offers to
but took it A files
sell
from A

162
 AIA: Hypothetical #1

• Inventor publishes an article in Nature on 16 Aug. 2013 disclosing

Invention ABC.

• Inventor has until 16 Aug. 2014 to file a patent application claiming

ABC or the inventor is barred from obtaining a patent per § 102(a)(1).

• Once the Nature article publishes EVERYONE ELSE is

IMMEDIATELY BARRED from obtaining a patent per the absolute
novelty provisions of § 102(a)(1).

163
 AIA: Hypothetical #2

• Inventor publishes an article in Science on 09 July 2013 disclosing

ABC.

• Independent of Inventor, Competitor publishes an article in Discovery

on 29 December 2013 disclosing ABC.

• Inventor can still obtain a patent on ABC if Inventor files an

application before 09 July 2014.

164
 AIA: Hypothetical #3
• Inventor enters into a confidential sale for Invention ABC with X on 21 May 2013.

• Can Inventor obtain a patent?

• As to whether secret commercial activity qualifies as prior art under the AIA, in
Helsinn SCOTUS held that the Metallizing Eng’g doctrine survives: secret commercial
activity can be prior art against Inventor (but not third parties).

• Thus, Inventor would have one year (until 21 May 2014) to file a patent application
(§102(b)(1)(A) would apply).

• What if there’s an intervening third-party disclosure after the confidential sale? [see
next slide]

165
 AIA: Hypothetical #4

• Inventor enters into a confidential sale for Invention ABC with X on 21 May 2013.
• Competitor subsequently publishes an article in Science on 29 December 2013,
disclosing ABC.
• Question 1: Can Inventor obtain a patent?
• No because Inventor’s pre-filing disclosure was not public. This aligns with the
Metallizing Eng’g doctrine. Thus, the subsequent 3d-party public disclosure by
Competitor is prior art against Inventor.
• However, Inventor will be able to avoid Competitor’s publication if Inventor can
prove that the subject matter was disclosed by Inventor himself in a public
disclosure (not a “mere” disclosure) prior to Competitor’s disclosure. See
§ 102(b)(1)(B).

• Question 2: Can Competitor obtain a patent on ABC?

• Yes if Competitor files an application before 29 December 2014. See
§ 102(b)(1)(A). Note that under Metallizing Eng’g, secret commercial activity is
only prior art against Inventor.

166