Table of Contents:

- Novelty

- Nature Of A Patent

- Infringement

Software Patents

Full treatise table of contents

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Chapter 4: An Overview of Patents

V. Novelty

The Patent Act requires that an invention be “new” in order for a patent to be granted. To be new, the invention must be both novel and non-obvious when compared with the prior art at the time of its invention.

Section 102 states the requirement for novelty and defines what constitutes prior art. Its seven subsections include definitions both for prior art and for other things that will bar getting a patent.

V.A. Prior Art

Subsections (a) and (e) define true prior art, in that they are based on what was done or known by others before the invention by the applicant:

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 . . .

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent. {FN28: 35 U.S.C. §102}

“Printed publication” has been interpreted to mean any written information that is accessible to the people who are most involved with the technology of the invention. It can include a typed manuscript that is cataloged and available in a library. It does not include information that is distributed on a confidential basis, such as a paper under review by a scientific journal or a proposal to the National Science Foundation.

There is no requirement that prior art be something that is still in use. Once something is prior art, it remains prior art forever. For example, an operating system technique may seem new because it is not used in current operating systems, but may actually be something that was implemented in an operating system no longer used, such as Multics. This prior art is often unknown to the applicant or the examiner, who may not be familiar with such historical systems, but is likely to be discovered by somebody being sued for patent infringement and wanting to invalidate the patent. Such searches are by their nature much more exhaustive than the one performed by the patent examiner, because the examiner’s search time is limited because he or she has to handle a number of applications in a timely fashion, and because doing a worldwide, in-depth search for prior art may be a small expense when the cost of patent litigation or having to abandon a product alleged to infringe a patent is considered.

There is no requirement that an applicant conduct any search of the prior art before filing a patent application. An applicant must bring to the attention of the examiner any prior art that is “material to patentability.” {FN29: 37 C.F.R. §1.56} Because any search cannot include patent applications that are pending but have not been published, nor consider every printed publication in the whole world, such a search can never determine with finality whether there is prior art out there. But it will prevent writing claims that read on the prior art that is discovered, allowing one to develop claims that have a better chance of being allowed with little or no amendment.

V.B. Inventorship

Note that while a printed publication anywhere in the world (and in any language) that occurs before the invention by the applicant is a bar to patentability, knowledge or use of a previously-invented version is a bar only when it occurs in the United States. But that does not mean that if you find something in a foreign country that is unknown in the United States, you can get a patent on it yourself. Subsection (f) limits patents to the true inventors:

A person shall be entitled to a patent unless –

(f) he did not himself invent the subject matter sought to be patented. {FN30: 35 U.S.C. §102}

Because of Subsection (f), patents can be issued only to natural persons, not businesses, so there is no work-for-hire doctrine as in copyright law. However, employers generally require that employees who may invent something as part of their employment sign an agreement assigning any inventions to the employer. In the absence of such an agreement, an employer may own the invention if the employee was specifically “employed to invent” the particular invention, or was generally hired to develop patentable things. If the invention was developed using the resources of an employer, but not as a specific job assignment, the employer may have a shop right to use the invention in its business.

It is important that only the true inventors be named on the patent application. Supervisors should be named only if they contributed to the invention, and not as a courtesy as is often the case with papers in scientific journals. Section 116 gives the special rules when there are more than one inventor:

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.

If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Commissioner, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.

Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Commissioner may permit the application to be amended accordingly, under such terms as he prescribes. {FN31: 35 U.S.C. §116}

Note that the last paragraph provides that inventorship can be corrected only if there was no deceptive intent. If the intent was to include a supervisor so that it seemed that he contributed when he really didn’t, that may constitute deceptive intent and it may be impossible to remove the supervisor’s name when it is discovered in litigation. And that may lead to the patent being declared invalid and unenforceable. The lesson is that only true inventors should be named in the application.

It may be that an inventor has assigned his inventions to his employer but then refuses to cooperate in applying for a patent, perhaps because he has left his job and is now working for a competitor. Section 118 addresses that situation:

Whenever an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage; and the Commissioner may grant a patent to such inventor upon such notice to him as the Commissioner deems sufficient, and on compliance with such regulations as he prescribes. {FN32: 35 U.S.C. §118}

V.C. Statutory Bars

There are a number of subsections of Section 102 that are statutory bars to receiving a patent, even if the invention was not known or obvious before it was invented. Subsection (b) is a composite of prior art and statutory bar, in that it addresses art that may exist after the date of invention, but before filing a patent application:

A person shall be entitled to a patent unless –

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. {FN33: 35 U.S.C. §102}

The purpose of Subsection (b) is to force the timely filing of a patent application after the completion of an invention. If an inventor were allowed to postpone filing an application indefinitely, he could wait until someone else was producing the invention and then file the application, effectively extending the time until the patent expired.

Most other countries do not provide this one-year grace period before filing an application, so it is important if you want foreign patents to file an application before publishing an enabling description (one that is sufficiently detailed to allow somebody to re-create the invention) or offering the invention for sale.

It is sometimes difficult to determine whether an invention is in public use. Court decisions have equated public use with commercial use, or use without an obligation of secrecy to the inventor. So, for example, in a classic case the Supreme Court found that the paving of a road with a new surfacing was not a public use, even though the public was driving over the road every day, because the paving was part of a test of the surfacing during a testing period controlled by the inventor. {FN34: City of Elizabeth v. American Nicholson Paving, 97 U.S. 126 (1877)} On the other hand, at about the same time the Supreme Court found that the wearing of a corset designed for a woman by her boyfriend was a public use, because he placed no special restrictions on her use, even though the corset was not on public display. {FN35: Egbert v. Lippmann, 104 U.S. 333 (1881)}

Also note that the one-year clock is started when the invention is “on sale,” not when it is first sold. That means that an offer to sell the invention starts the clock. An interesting question is whether the clock starts if the offer is for an invention that has not yet been completed. In 1998, the Supreme Court held in Pfaff v. Wells Electronics Inc {FN36: 525 U.S. 55, 48 USPQ2d 1641 (1998)} that the on-sale bar applies when (1) the product of the invention is the subject of a commercial offer for sale, and (2) the invention must be so complete that it is “ready for patenting,” either because the invention has been completed or because there are “drawings or other descriptions of the invention that [are] sufficiently specific to enable a person skilled in the art to practice the invention.” {FN37: 525 U.S. at 67-68, 48 USPQ2d at 1647}

Even if an invention is not in its final form, it still may be ready for patenting if a prototype works and the prototype contains all the claimed elements, or portions of the invention have been tested and it is clear that there will be no difficulty combining them to produce a complete working embodiment. For example, a proof-of-concept prototype of a software method would be “ready for patenting,” even if it is written to handle only one or two users at a time and may crash occasionally because it does not contain code to handle exceptional situations.

Along with Subsection (f), Subsections (c) and (d) are statutory bars to getting a patent if the inventor has abandoned the invention before applying for a patent, has applied for a patent in a foreign country more than a year before filing an application in the United States, or did not actually invent the claimed invention:

A person shall be entitled to a patent unless –

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States. {FN38: 35 U.S.C. §102}

Applicants filing both in the United States and in foreign countries must be careful if they file first in the United States. Section 184 states:

Except when authorized by a license obtained from the Commissioner a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. {FN39: 35 U.S.C. §184}

The penalty for premature filing in a foreign country, given in Section 185, {FN40: 35 U.S.C. §185} is refusing to grant a United States patent on the invention or, if a patent issues before the premature filing has been determined, the invalidation of that patent.

V.D. Provisional Applications

Even though the United States provides a one-year grace period from the time an invention is described in a printed publication or offered for sale until a patent application is filed, it seems as though every patent agent or attorney has had a client who didn’t realize that he or she needed to file a patent application until eleven months after the clock started running with a publication or offer for sale. A recent revision in the patent statute, providing for a provisional application, offers a way to get another year to file the actual patent application.

The rules for provisional applications are found in Section 111(b). {FN41: 35 U.S.C. §111(b)} A provisional application consists of a description of the invention (a specification), accompanied by any necessary drawings. There is no requirement that the provisional application contain any claims. The provisional application gives the applicant a “right of priority” with respect to prior art as of its filing date. In other words, the clock is stopped with respect to prior art as of the time of the filing of the provisional application for those aspects of the invention that are described in the provisional application.

Generally, there is little to be gained by filing a provisional application rather than a regular application. You still have to have a proper disclosure of the invention, such that a person can make and use the invention. And while you don’t have to file claims with the provisional application, if you don’t know what you are going to claim, it is very hard to know what to describe.

There are, however, two special circumstances where filing a provisional application may provide a substantial benefit. If you have published a paper and the one-year clock is about to expire, you can file that paper itself as a provisional application. (Remember, no claims are necessary.) To the extent that the paper would be prior art in its description of the invention, it is also an enabling disclosure of the invention. Filing the paper removes it from the prior art that can be considered against the actual application, which must be filed within a year of the provisional application.

A similar trick can be used when a software invention has been offered for sale and the one-year clock is about to expire. A copy of the source code can be filed, along with a brief description of the invention. The source code, obviously, completely describes how the software invention works, albeit in a less-than-convenient form. An actual application, filed within a year, can provide a more understandable description of the invention and how to use it. A difficulty with filing such a source-code provisional application is that it discloses not only the invention that may later be claimed but any trade secrets unrelated to the claimed invention that are also in the source code. But that may be a reasonable price for getting patent protection when it would otherwise be lost because of the statutory time bar.

V.E. Interferences

Finally, Subsection (g) is an exception to the United States rule that the patent goes to the first person to invent:

A person shall be entitled to a patent unless –

(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. {FN42: 35 U.S.C. §102}

There are two important times during the creation of an invention: when it is conceived and when it is reduced to practice. “Conception” marks the beginning of the inventive process, and occurs when the complete invention, such as the specific method for solving a problem or the overall structure of the device, is clear in the inventor’s mind. It must be so complete that it is clear that it can be brought into existence and will work.

Obviously, because conception is in the mind of the inventor, it is difficult to prove precisely when it occurs. Because an inventor’s testimony is likely to be self-serving, objective evidence of the date of conception is generally necessary. The best evidence is an inventor’s notebook describing the invention, dated and witnessed by somebody who understands the invention.

An invention is not completed until it is reduced topractice, either by having a working prototype or by filing a patent application that enables the invention by describing how to make and use it so completely that a person with ordinary skills can reproduce the invention without undo experimentation. Reduction to practice by means of filing an enabling patent application is called “constructive reduction to practice,” as opposed to an “actual reduction to practice” when a prototype is constructed.

Under Subsection (g), if a person who isn’t the first applicant for an invention can show that he conceived the invention before the first applicant and has been diligent in completing the invention, then he is entitled to the patent for the invention. This is determined in an “interference” proceeding in the Patent Office, a hearing where both applicants present their evidence of their dates of conception and reduction to practice to administrative patent judges who determine which one should get the patent.

If an inventor has not been diligent in reducing the invention to practice, his date in the interference will be the date when he started his diligent reduction to practice, rather than his date of conception.

All other countries give the patent to the first inventor to apply for it, which simplifies determining who is entitled to the patent and promotes the prompt filing of a patent application. Although the United States has considered going to a true first-to-file system, rather than its current first-to-invent system, strong opposition from small inventors has blocked the change. But because documentation proving the date of conception is necessary to prevail in an interference, and many inventors do not keep the detailed notebooks required to prove their date of conception and continuing progress, most interferences result in the first applicant receiving the patent.

Next section: Anticipation And Obviousness