howdy welcome to week two of patma so this is the first lecture for this week like last week there will be uh two additional lectures and we're going to work through the basics of novelty um so let's go ahead and get started so novelty is the first uh for patentability requirements that we're going to look at each of the substantive and procedure requirements that you must satisfy when you apply for a patent and it will also be tested if you choose to litigate your patent or try to enforce it uh within the litigation again as we saw last week the defendant can challenge the patent as being invalid because it's not novel and because it's obvious or it's not useful or your disclosure was not satisfactory or because it was not bad or subject matter as we spoke about last week however once you get your patent applications through the PTO and your patent issues invalidity is presumed valid and so a defendant wants the challenge of validity must prove it by a clear and convincing evidence which is a heightened evidentiary standard over the usual standard that we were relying on in civil litigation that is presumption preponderance the evidence so we're going to take a look at each of these now you can see I've also put the relevant statutory section this is Section 102 for novelty the statutory language for non-obviousness his family in section one and three utility and the required disclosures are in sections 101 and 112 and patent whole subject matter is largely a court created Doctrine but you'll find some parts of it in section 101 of the statute and so the patent Act is the patent Act of 1952 but it's codified title 35 in the United States code so usually you'll see in case decisions and the like lawyers briefs on this issue 35 USC for example Section 102 it would be a reference to novelty requirements of the patent Act so the basic concept for novelty is pretty easy to understand we're not going to give a patent on something we already have patents provide the exclusive right to the patent holder to make use sell or offer to sell the patent invention and if we already have it all it does is create an exclusive right so there for example could only be one seller of salt so at the bottom slide we see this sort of basic policy or rule that we're trying to enforce through the novelty Doctrine and as we're not going to give a patent on salt because we already have it now if you could get a patent on salt that would be really valuable you're the only one in the US that could make you sell or offer sell salt people would have to come to you from essential of life and you could price your product accordingly but in order to get a patent you must give us something new something novel that's what we mean by novelty is that it's something we don't already have and so then we'll give you the patent in exchange so again that bargaining quid pro quo this for that notion of pets where you give us something new and we give you the exclusive right to that something new for a limited period of time now as we talk through novelty We'll be asking is it new relative to what we already have but we have a phrase we use as patent lawyers and in patent law for something we already have and we refer to those things we already have as prior art and usually we want to focus on prior art references this is a earlier patent an earlier printed publication earlier public use some sort of proof that we already have whatever it is that we're talking about something belongs in the prior bar so as we go through novelty and we'll do this again with non-obviousness next week uh there are really three questions as the case book lays out that we're going to be focusing on uh what must be disclosed so for a prior art reference to anticipate so if your invention is not novel it's not new we refer to it as being anticipated it's already present in the prayer Arts so what does that mean what has to be disclosed in order for a reference to anticipate or render not novel your patented invention again when we say patented invention keeping in mind what we're talking about is the language in your claim what counts as a public disclosure what does it mean for us to already have it and when must the disclosure occur so we're going to focus on these three questions now in this first lecture we're just going to cover the basics and we're going to get some more advanced topics as we go forward and we'll see how that goes so here's the actual statutory language the basic rule uh now there are actually two basic rules that are currently enforced in the legal system Congress enacted the America in Benz act the AIA in 2011 and for patent applications with an effective filing date before March 16 2013. we're actually going to use a different set of basic rules and so we'll take a look at those in the next lecture but for this first lecture we're just going to focus on the current rules they're enforced for all applications filed on or after March 16 2013. and so the division is 102 A A person shall be entitled to a patent unless one the claimed invention was patented described in a printed publication or in public use on sale or otherwise available to the public before the effective filing date of the claim invention now I talked about three different questions that we have and this statutory section answers each of those so what must be disclosed the patented invention so you have to have a prior art reference that has each of the elements set forth in the patent claim that we are looking at and so what counts as disclosure and again the statutory section defines that for us either something a patent a patent itself or a printed publication such as an article or a blog post could be really anything almost but some sort of printed public disclosure the patented invention was on sale it was in use by others or otherwise publicly known so we have a number of different things that count as disclosures as ways of showing on the patent office or the court that the invention was something we already had now when we talk about prior art referring to prior to some specific date so when must the disclosure occur in order for the reference the patent the printed publication the thing that's on sale to be count as counted as prior art well again the statutory section says the disclosure must occur before the effective filing date of the patent application okay now that's all pretty straightforward the problem is that there is an exception in 102 B of the statute here's the statutory language this is a continuation of something the U.S has long done which is to provide the inventor a 12-month or one year grace period in which to file the patent application so the inventor can allow uh can make a public disclosure can put the invention on sale or otherwise use it in a way that makes accessible to the public and the inventor would then still have one year in which to file the patent application this used to be known as the statutory bar because after the one year passed it absolutely barred the granting of a patent on a relevant application a patented invention that had already been on sale for more than that one year period and so the language is again a little more complicated right but the disclosure made one year or less before the effective filing date of a claimed invention so again whenever we talk about the invention at issue we're not referring to the Prototype or the version of The Invention that's being marketed out in the markets we're talking about what you have written down in your patent application as the claims and there may be again more than one of them and we take each claim one by one and so uh if the disclosure was made less than a year out and it was made by the inventor or by someone who obtained the um disclosure directly or indirectly from the inventor or joint inventor or the subject matter disclosed had or before such disclosure been publicly disclosed by the inventor or joint inventor or another who derived the material from the inventor then you still have the one-year grace period so we're going to look at some examples that sort of break this down and test our understanding of how these two rules section 102a and 102b work in conjunction with each other so before we get to those examples one point I should make very clear is this is an example of the United States exceptionalism keep in mind that patents we don't really have we have sort of a number of treaties and other Provisions that make it easier to get patents in other countries but we have a country by country or European Union has a European union-wide patent the same idea right each geographic area the relevant government Authority has a patent that covers uh the inventive activity that gives you the exclusive right to make use seller offers sell the patented invention in that geographic area where the patent applies and so for the most part the United States patent if you go to the United States patent and trademark office you apply for and you receive a United States patent it's really only good it's right to make exclusive right to make you sell or offer sell the patented Dimension only applies within the United States now it's a little bit broader than that if there are people outside the United States who are using the the patented invention uh directed at United States customers United States commercial activity you can get sometimes get injunctive relief or remedies on the U.S patent system against that but generally U.S patents enforceable only against U.S activity if you want to stop someone from practicing intervention in Japan or China or South Korea or in Europe or the UK you generally need to get a patented each of the relevant Geographic areas where you want to control the use of your patented invention as I said there are a number of trees that we've signed that the principal one being the patent cooperation treaty where you it makes it simpler and easier to obtain a patent you file in the U.S and then designate the patent application under the PCT as also applying for patent protection in other countries but U.S patent's only good on its own in the United States that's relevant here because um on this grace period it is 12-month race period and the United States this is one of the few there are a few others but one of the very few countries that follows the grace period rule most of the rest of the world including Europe South Korea China and UK follow a stricter absolute novelty rule right instead of the inventor or anyone else has made a public disclosure of the invention before the patent filing date that's going to borrow the obtaining of a patent that should be denied is it what's its way through the relevant patent office and so just be aware if you have an invention that's likely to have a worldwide demand or could be made and sold in anywhere in the world you're going to want to file your patent application in the U.S and wherever else you're going to need protection uh before you make any public disclosure before you make a research presentation on it before you put it on sale certainly or before you otherwise commercially exploited okay so I'm going to go back to our slides here and so we thought under 102a that we had three sort of straightforward answers to our three questions but 102b complicates our answers just a little bit so let's think about how to do so what must be disclosed the patented invention what counts as a disclosure that shows that we already have the patented invention either an earlier patent an earlier publication on sale used by others or otherwise publicly known when must the disclosure occur any disclosure before the effective filing date of the patent application will usually bar the patent even here in the U.S but under 102b you can get this 12-month grace period if two conditions uh two alternative conditions one of them is satisfied either the applicant's own disclosure or app can disclosed first uh and so you have to be the first to disclose for if you're the only one that does right so those two does the two Alternatives either you were the first disclose the only one to disclose but neither case had that disclosure had to be within 12 months of the effective filing date of the patent application okay so let's look at some questions so here's our first question and this again we're going to apply the current rules keep in mind that there are actually two regimes in force we look at the pre-aia regime in the next lecture so as of June 1st 2020 Allen has a working prototype of his invention and it's just a floating widget for nitrogen standing beer now keep in mind that while this is his invention in the ordinary sense of the word uh by the time we get to the patent office and file a patent application that invention will not be the little prototype itself however large or small it is it will actually be the words used in the various claims to describe and claim the invention and so here's our potential prior art problem on March 15 2021 Beth independently publishes an article describing the same widget so the word independently is here in this example to make clear that Beth did her own work she didn't derive her invention from a island and take Allen's invention sneak into his lab or work in his lap or otherwise obtain the information from Alan that's a relevant Factor under 102b and then on my May 28 2021 Allen files a patent application so what result by that I mean is Alan going to be able to get his patent application through the patent office assuming the patent office becomes aware of this best prior art and because it's a published article and the patent examiners can relatively easily search the public domain for Relevant articles using Google or something of that sort the patent is you know the letter of it should Pat and Alan be entitled to a path and the answer here is no so under our current novelty rules any prior art publication it's not the inventor's own before the effect of filing date of the application is going to Bar the patent so here Allen's effective filing date is May 28 2021 and um two months before that in March on the 15th Beth has published an article describing the same widget now there are a couple of other factors we need to look at right we've got to make sure that the article actually describes the widget and sufficiently sufficient to tell that a person having ordinary skill in the art or proverbial for Zeta could practice The Invention without undue experimentation so we'd have to check that but you don't get the 12-month grace period if someone else publishes first now it's true here that Alan had invented it almost a year ago but that doesn't help Alan at all in any way now if he files his patent application at any time after his invention as long as it was before best article so before March 15 2021 then Alan would have been entitled to a patent but because he waited too long until um two months and a few weeks after Beth published his article her article be prior art and it's a single prior art reference that describes the widget that is describes the same elements that are set forth in the patent claim that Allen is filing in his application so Alan would be denied his patent application would be rejected and he would not be entitled to a pad okay so now we turn it around a little bit change the facts just a little bit and let's think through what this would do so here instead of just inventing on June 1st and keeping it in his lab for himself or his garage wherever he's working Alan entered into a sales agreement with camcord to sell 100 units of his invention which was again uh here in the ordinary sense of the word of invention the floating widget for nitrogenation beater and so of course by the state he has a working prototype of his widget and then we get Beth publishing her same article same date March 15th and then by May 28th Alan go ahead goes ahead and files his patent application so should Alan be entitled to a patent under these facts assuming they're true and assuming the examiner is aware of it hear the answer is yes under 102a Beth's article is again a sort of anticipatory prior art reference we would say but under 102b Allen's entering into the sales agreement with Tam Corp is a disclosure public disclosure of his invention and so he disclosed first moreover he disclosed within a year he filed his patent application with a year of his own disclosure so even though Beth published the article before the effect of filing data violence patent application because Alan disclosed first he still gets the 12-month grace period under Section 102 B and so would be entitled to a patent on this application okay the last of these exercises we're going to look at right in this week's first week lecture of the second week is exercise 1C and so again we get the same sales agreement we get the same article being published but now Alan Waits until July 1st to 2021 to file his patent application so what result here again assuming all these facts are true and the examiner is aware of them so we've got to make sure that the sales agreement has completed prototype so that's a public disclosure the article's still independent so that's also public disclosure and sufficiently detailed to enable uh person having ordinary skill in New York to practice the widget in this case the answer is different than 1B and because Alan waited more than a year after his sales agreement and that counts as a public disclosure he's going to be out of luck so he gets the 12-month grade period because Alan disclosed first by putting it on sale but it's still only a 12-month grace period and he waited 13 months to file his patent application so he's going to be out of luck and his patent applications should be denied okay so the last thing I want to cover in this initial lecture on novelty is what we call the single reference rule and that is we need a single reference from the priority something has been patented that's been published that has been put on sale or otherwise used by others or known to the public some single prior art reference that sale or that printed article that describes the patented intervention what we mean by that it contains every element in the patent claim so to illustrate this the case book gives us the example of a patent application for the Swiffer spray cleaning solution with a disposable cleaning pad so they've simplified the claim elements but the claim file and sort of um cleaning mop comprising a handle a mop head a cleaning solution dispenser and a disposable cleaning pad so it has these four elements you can think of them just in a very simplified sense as a b c and d now we have three prior art references and each of them has some of those elements so we have the traditional sponge mop which has a handle and mop head we have an article which again a publication counts as a prior art reference with a disposable cleaning pad so it has the handle the mop head and the Disposable cleaning pads three of the four elements and then we also have an earlier pack on a broom with a clean solution dispenser attached to it so we have there two of the elements the handles are not the mop head and the cleaning solution dispenser but again not the Disposable cleaning pad so the question arose does these three prior art references together because together they have all four elements should that bar on your 102 under the novelty provision uh the Swiffer from receiving a patent on this application and the answer is no because uh the single prior art reference rule a single priority at reference has to contain all four elements sometimes when we say novelty what we mean by that is that the slow closure has to be the exact invention now next week we're going to look at non-obviousness and in non-obviousness we can combine prior references and so we could take this one that has two of them this one that has three of them and this one that has two others of them and say should we look at these prior art references together under non-obviousness in some circumstances uh you may and so then you might say that the invention Swiffer came up with the combination does for was still obvious but we'll look at that in connection with obviousness you can't do it though under novelty okay so that's the first lecture for the second week on novelty we'll continue our discussion of novelty uh in the second lecture which will be coming up next and so uh as with last week's lecture there will be discussion questions so post your answers to those they're from the case book in the discussion section and at the end of the week you'll have some sort of quiz or assignment to do as well