CHAPTER 7 Outline

• Jurisdiction: United States

CHAPTER 7

Novelty, No Loss of Right, and Priority [Pre-America Invents Act of 2011]

Chapter Explanatory Note

§7.01 Statutory Basis: 35 U.S.C. §102 (2006)

[A] Burden of Proof on USPTO

[B] Claim Interpretation in USPTO

[C] Prior Art as Defined by §102

[D] Lack of Novelty Versus Loss of Right

[E] Persons Who Can Trigger the §102 Provisions

[F] Geographic Limitations in §102

[G] Temporal Limitations in §102

§7.02 Anticipation

[A] Definition

[B] Strict Identity Rule

[1] "Four Corners"/Single Reference Rule

[2] "Arranged as in the Claim"

[a] Generally

[b] Reference Not Anticipatory If It Must Be Distorted

[3] Exceptions to the Single Reference/"Four Corners" Rule

[4] No Analogous Art Requirement for Anticipation

[5] To "Suggest" Is Not Sufficient for Anticipation

[C] Species/Genus Relationships

[1] Generally

[2] Contrasting Case Examples

[3] When is a Prior Art Genus a “Limited Class”?

[D] Question of Fact

§7.03 Inherent Anticipation

[A] Generally

[1] "Necessarily Present"

[2] Reference Failing to "Necessarily Disclose"

[3] Use of Extrinsic Evidence to Establish Inherency

[B] Accidental Anticipation

[C] Contemporaneous Recognition Not Required

§7.04 Enablement Standard for Anticipatory Prior Art

[A] General Principle

[B] Exception for Prior Art Compounds Lacking a Utility

§7.05 Anticipation Under §102(a)

[A] Filing Date as Prima Facie Invention Date

[1] References Having Effective Date Less Than One Year Before Applicant's Filing Date

[2] Antedating a Putative Prima Facie §102(a) Reference by Establishing an Earlier Invention Date

[a] Generally

[b] Relying on Inventive Activity Outside the United States Under 35 U.S.C. §104

[c] Disclaiming Affidavits

[B] "Known or Used by Others" Under §102(a)

[C] "Patented" Under §102(a)

[D] "Printed Publication" Under §102(a)

[E] Strategies for Overcoming a §102(a) Anticipation Rejection

§7.06 Loss of Right/Statutory Bars Under §102(b)

[A] Introduction

[1] Filing Date

[2] "Critical Date"

[B] Grace Period

[C] Policies Underlying the Statutory Bars

[D] "Patented" Under §102(b)

[E] "Printed Publication" Under §102(b)

[1] Public Accessibility

[2] The Thesis Cases

[3] Confidentiality Norms

[4] Scientific or Technical Presentations

[a] Klopfenstein (2004)

[b] Medtronic (2018)

[5] Internet Postings

[a] SRI Int'l (2008)

[b] In re Lister (2009)

[c] Jazz Pharms (2018)

[d] Acceleration Bay (2018)

[6] Trade Shows and Conventions

[a] GoPro (2018)

[b] Nobel Biocare (2018)

[F] "Public Use" Bar of §102(b)

[1] Foundation: Egbert v. Lippmann (1881)

Chapter OUTLINE

[2] Public Use by Third Parties

[a] Generally

[b] Corroboration of Oral Testimony

[3] Non-Public "Public Use"

[4] Ready for Patenting

[G] "On Sale" Bar of §102(b)

[1] Introduction

[2] Policy Considerations

[3] When Is an Invention Capable of Being Placed On Sale? Pfaff v. Wells (U.S. 1998)

[4] Post- Pfaff Decisions Interpreting "Commercial Offer"

[a] Decisions Finding No Commercial Offer

[b] Decisions Finding Commercial Offer

[c] Supplier Sales

[d] Contingent Sales (Conditions Precedent)

[5] Post- Pfaff Decisions Interpreting "Ready for Patenting"

[a] Inventions Not Ready for Patenting

[b] Inventions Ready for Patenting

[H] Experimental Use Negation of the Statutory Bars

[1] Meaning of "Negation"/Burden of Proof

[a] "Negation" Not "Exception"

[b] Assigning Burdens of Production and Proof

[2] Foundation: City of Elizabeth v. Nicholson Pavement (1878)

[3] Experimental Use Factors

[4] Must Experimental Use End with Actual Reduction to Practice?

[5] Positioning Experimental Use Within the Pfaff Framework

[I]

...