Successfully reported this slideshow.

Patentability requirement on novelty

1,878 views

Published on

Introduce the requirement #3: Novelty & the date issue on “first to file” & 1 yr law
Talk the satisfy condition on the novelty requirement
Finally, share the law recognizes 3 types of novelty (Section 102) on the part of Physical (hardware or method)

Published in: Business
  • Be the first to comment

  • Be the first to like this

Patentability requirement on novelty

  1. 1. Patentability requirements on novelty + the parts of unobviousness Chen JingFung (Grace) @csie.ntut.edu.tw 2012/03/29Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
  2. 2. Outline• Review: – Patentability of 4 legal requirements• Requirement #3: Novelty – Prior art on 1 yr law & Specifics of Prior Art – The law criteria of novelty Grace@iii.org.tw & ntut.edu
  3. 3. Patentability – 4 legal requirements 4 legal Law Criteria requirement sectionUnobiousness 103 Can provide one or more new & unexpected results (?) Can make of innovation in the specific technology (?)Novelty 102 new physical feature (?) new combination of separate old feature (?) new use of an old feature (?)Utility 101 Can be regarded as a useful one (?) 5 classificationsStatutory class 101 process machine manufacture composition New use Patent law 35 USC 101 or 35 USC 102 or 35 USC 103 Grace@iii.org.tw & ntut.edu
  4. 4. Requirement #3: Novelty: Prior Art – The One-Year Rule• Your invention must Not be Publicly known > One-year rule – Patent laws constraints: file a patent (PPA or regular) application within one year (< 1 yr) after • You sell, offer for sale, commercially/ publicly use or describe your invention, or allow another to use it without restriction – “> 1 yr” ? <- the law can bar your invention • PTO will no longer consider it novel• “one-year rule” under the “prior art” Grace@iii.org.tw & ntut.edu
  5. 5. Novelty: Specifics of Prior Art• Define prior art to consist of 35 USC 102• Categories – “prior printed publication” is the most important category of prior art – Others prior vs. your invention’s conception – “public-use-and-knowledge” category • No record case/ public & a example for no a prior art – “prior foreign patents ” category – Prior “sale” or “on-sale ” category Grace@iii.org.tw & ntut.edu
  6. 6. Novelty (1): Specifics of Prior Art-1 prior printed publications• Any printed publication can be a valid prior art if it was published – Before your earliest provable date of invention – Over one year before you file your patent application • “printed publication” includes US. & foreign patents (effective as of their filing date), books, magazines (e.g. trade & professional journal) … • Even photocopied theses in a college library or old comic strips Grace@iii.org.tw & ntut.edu
  7. 7. Novelty (1): Specifics of Prior Art-2 prior printed publications• Computer tip (Publicly available) – info on PC utilities or PTO has used old Dick Tracy network would be a printed comic strips as a prior art !! publication• The “prior printed publications” category is the most important category of prior art – You generally encounter – PTO refers to (cites) • Solution: Search patents in Fig ref: ocad.ca manly U.S. patents Grace@iii.org.tw & ntut.edu
  8. 8. Novelty (2): Specifics of Prior Art others prior vs. your patent • Prior-art date for U.S. patent ? • a filing date • or claims priority of a PPA that has a filing date – earlier than your earliest provable date of invention is considered valid prior art You conceive of File your your invention patent 2 months later 6 months later 8 Jun 2011 9 Jun 2011 9 Aug 2011 9 Feb 2012Goldberger’s patent Goldberger issuesapplication was filed that shows all or<- earlier than your part of your date of conception invention PTO will no longer consider it Goldberger’s patent novel under Section 102 (e) wouldn’t be prior art <– < per 35 USC 102 patent laws to your application Grace@iii.org.tw & ntut.edu
  9. 9. Novelty (2): Specifics of Prior Art A common misconception• only in-force patents haven’t yet expired to count as prior art – This isn’t true• Any earlier patent is all prior art • even if it was issued 150 years ago and • has long since expired – will constitute valid prior art against an invention.• Otherwise, patents would have a lesser status than other publications patent Other publications Grace@iii.org.tw & ntut.edu status
  10. 10. Novelty (3): Specifics of Prior Art on “public use and knowledge” – no written record/ public use• No written record is also a prior art <- will defeat your right to a patent – Earlier heat-treating process used by a blacksmith in a town (never published) – Or show a kaleidoscope in a party with 30 attendees don’t worry: “Throw a party & lose your patent right!!” kaleidoscope You forget to file a patent application until 13 months later <- become a prior art!! Grace@iii.org.tw & ntut.edu
  11. 11. Novelty (3): Specifics of Prior Art on “public use and knowledge” category• This “public-use-and-knowledge” category of prior art is almost never used by the PTO – have no way of uncovering it – Search only patents & other publications – However, defendants (infringers) in patent lawsuits happen to uncover a prior public use • They rely on to invalidate the patent Grace@iii.org.tw & ntut.edu
  12. 12. Novelty (3): Specifics of Prior Art on “publicuse and knowledge” - experimental exception• Public experimental purposes for bona fide (good faith) – It doesn’t count as prior art “painted San Francisco building”• E.g. – you build & test the durability of you new paint • Keeping records (by photographed) on its reflectively, wear resistance, & adhesion • It is not a prior art Fig ref: botjunkie.com Grace@iii.org.tw & ntut.edu
  13. 13. Novelty (4): Specifics of Prior Art - prior foreign patents• Apply any foreign patent U. S. S. R. (includes Russian or former U.S.S.R) before your U.S. filing Russian date > 1 yr – Called prior art Fig ref: wikipedia – Correct: you should apply your US patent within one year Grace@iii.org.tw & ntut.edu
  14. 14. Novelty (5): Specifics of Prior Art - prior sale + abandonment vs. pass• Section 102 also define the actions by human to be “prior art” – Offer, sale, or commercial use your invention or prototype in US or foreign • It’s danger for filing patent over 1 yr• Abandonment vs. pass – make a model of your invention, test it, fail to get it to work, or fail to sell it • Try to patent it; • if you abandonment becomes known, would lose your right to a patent – But if you merely stop work on it for years because of such reasons as health, finances, or lack of a crucial part, but • intend to pursue it again when possible, • the law would excuse your inaction Grace@iii.org.tw & ntut.edu
  15. 15. Novelty (6): summary of prior art• “prior-art” rules seem complicated and difficult to understand – Simplify Section 102 someday and enact a “first to file” law; list the related prior art usually consists of • any published writing 1. before your earliest provable date of invention 2. over one year before you file your patent application • a filing or PPA date > your earliest provable date of invention • any relevant invention or development (whether described in writing or not) is existing prior art • any public or commercial use, sale, or knowledge of the invention more than one year prior to your application Grace@iii.org.tw & ntut.edu
  16. 16. Novelty (7): Will satisfy the novelty requirement ? Yellow with green polka dots No bicycle has been Satisfy the req. of painted this way before novelty• Run a “patentability search” to reveal any prior inventions or reference that could be a dead ringer (similarity) – search out an actual device or published description • Show all the features of yours & operate in the same way <- your invention == “prior art”• The law recognizes 3 types of novelty (Section 102) – (1) Physical (hardware or method), (2) New combination & (3) New use Grace@iii.org.tw & ntut.edu
  17. 17. Novelty (8): the law criteria of novelty – physical differences -1• Here your invention has some physical or structural (hardware or method) difference over the prior art – Ex. Invent a machine, composition, or article it must be or have 1~more parts that have a different shape, value, size, color… than existed one• Notice: lighter, faster, safer, cheaper to make or use, portable … – these factors are new results or advantages, not physical or method step differences, and are primarily relevant to unobviousness – E.g. Physical means five or three gears on machine Grace@iii.org.tw & ntut.edu
  18. 18. Novelty (8): the law criteria of novelty – physical differences -2• A physical difference can also be subtle or less apparent in the hardware sense, so that it’s manifested primarily by a different mode of operation. E.g.: a) an electronic amplifying circuit that looks the same, but that operates in a different mode — say Class A rather than Class B; b) a circuit that is the same physically but is under the control of different software; c) a pump that looks the same, but that operates at a higher pressure and hence in a different mode; and d) a chemical reaction run at a substantially different temperature or pressure.• All of these will be considered novel, even though they appear the same to the eye Grace@iii.org.tw & ntut.edu
  19. 19. Novelty (8): the law criteria of novelty – physical differences -3• Firstly, your invention is a new process <- you don’t need any novel hardware• Secondly, your physical novelty is basically your new way of manipulating old hardware.• Any novel step or steps whatever in this regard will satisfy the physical novelty requirement Grace@iii.org.tw & ntut.edu
  20. 20. Summary• Introduce the requirement #3: Novelty – Notice the date issue on “first to file” & 1 yr law – Talk the satisfy condition on the novelty requirement – Finally, share the law recognizes 3 types of novelty (Section 102) on • Physical (hardware or method) Grace@iii.org.tw & ntut.edu
  21. 21. Reference• David Pressman, chapter 5, “Patent It Yourself: Your Step-by-Step Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN- 10: 1413313825 – Reference by “Previous Course Slide” record set: introduce invention, evaluate invention, WM2Patent & Patent Requirement• Blog: http://fungsiong.blogspot.com/ – Introduce hybrid TV (hbbTV) including widget design, Android technology (API), system, ecosystem, framework, service, application…, – Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork – Some programming info. as Apache wookie, refactoring tech, CE-HTML, a solution about removing a backdoor “Trojan” & surveillance paper Grace@iii.org.tw & ntut.edu

×