Week 4: The Law of Novelty and Nonobviousness

Law of Novelty and Nonobviousness

Week 4: The Law of Novelty and Nonobviousness

“Novelty … Nonobviousness
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  • Week 4: The Law of Novelty and Nonobviousness > Novelty > The Novelty Requirement
  • Week 4: The Law of Novelty and Nonobviousness > Novelty > What is the Prior Art?
  • Week 4: The Law of Novelty and Nonobviousness > Novelty > Statutory Bars
  • Week 4: The Law of Novelty and Nonobviousness > Novelty > Exceptions to Statutory Bars
  • Week 4: The Law of Novelty and Nonobviousness > Novelty > Effects of the America Invents Act on Novelty
  • Week 4: The Law of Novelty and Nonobviousness > Novelty > Incentives Under the America Invents Act
  • Week 4: The Law of Novelty and Nonobviousness > Nonobviousness > The Nonobviousness Requirement
  • Week 4: The Law of Novelty and Nonobviousness > Nonobviousness > Origins of the Nonobviousness Requirement
  • Week 4: The Law of Novelty and Nonobviousness > Nonobviousness > The Determination of Obviousness
  • Week 4: The Law of Novelty and Nonobviousness > Nonobviousness > Hindsight Bias

Week 4: The Law of Novelty and Nonobviousness > Novelty > The Novelty Requirement

  • What we’re going to do in this lecture is first talk about patent novelty, what that requirement is- the requirement than every patent be new- and then its close cousin, statutory bars- not quite the same as novelty, but a lot of commonalities.
  • A patented invention, when we talk about the invention, we need to be clear that what we’re talking about is the claim.
  • What is in the statute as the invention is really the claims found at the end of the patent, as we talked about in some of the earlier lectures.
  • Each patent claim in a patent is evaluated for patentability and for infringement- but for our purposes today for patentability- independently.
  • Which means it’s possible that if you had- for example- 15 or 20 patent claims in a patent document, which is an entirely typical amount, that it’s possible that five or 10 of them could be patentable and the others might not be.
  • Each claim stands or falls on its own with respect to validity- and later on in the course we’ll find out with respect to infringement.
  • So when we talk about patent in inventions, we’re talking about an individual claim of a patent document.
  • So what novelty really means, if you want to break it down into a fairly easy to remember phrase, is that your claim cannot be the same as the prior art.
  • This is claim one that we’re talking about here, but if I had 20- for example- claims in my patent document I would label them 1 through 20.
  • Each claim must be distinct and different, which means it would have different words.
  • So step one in any validity analysis, and including novelty, which we’re talking about right now, is to figure out what your claim is.
  • How do you do anticipation? What anticipation means in the patent laws is that each and every element of the claim is predated or found in some piece of prior art.
  • So now the question is does that pencil anticipate our claim? And by saying that, what we mean is, is each and every element of the patent claim found in that prior art reference, found in the pencil reference? Well let’s go step by step.

Week 4: The Law of Novelty and Nonobviousness > Novelty > What is the Prior Art?

  • This was to broaden the scope of prior art, harmonize ourselves with the way that other patent systems in the world conducted themselves, and so forth.
  • So what do we mean by “known or used by others?” So in the patent law, “others” means somebody other than the inventor.
  • The law is pretty clear here that “others” does not mean that your invention prior to the critical date be widely known.
  • Even a single other user or other bit of knowledge can suffice to destroy novelty, to anticipate your invention.
  • The case that’s often used to describe this is Rosaire versus Baroid, where an engineer did a field trial on a method of prospecting for oil.
  • He did this all prior to somebody else inventing the same method.
  • No publications, no products were sold based on the field trial.
  • Now the question that the court was presented with is, does the field trials, even though they occurred out in the middle of nowhere, there was no publication, there was no effort to publicize this at all, does this qualify as “known or used by others?” And the court answered yes.
  • “Known or used by others,” the court says, means any knowledge, any use by others, as long as they weren’t taking affirmative steps to try and keep it secret.
  • Since that engineer who was doing the field trials wasn’t trying to keep it secret, he wasn’t trying to do anything other than just do the field trials, he was just conducting normal business, that counts as a “known or used by others,” and the patent claim was invalid for lack of novelty.
  • The next thing that can be prior art is a printed publication.
  • Printed publication you might think means things that are printed and published.
  • As in so many other cases in the patent law, the words are not really given their ordinary meaning.
  • Printed publication under the law means anything that’s publicly accessible.
  • So it could be a printed publication, a magazine article, a journal article for example.
  • It could be a TV show could be a printed publication.
  • Anything that’s publicly accessible, that’s possible for a person having ordinary skill in the art to find, is a printed publication.
  • Typically what the courts say is it needs to be indexed in some way, typically by subject matter, so that if you are for example working in the field of oil prospecting and you wanted to know what information was out there, you could potentially find it.
  • The classic case here, the case that we often teach in this area is that In re Klopfenstein case.
  • Even though the slides were never published, the paper was never published, it wasn’t distributed in any way, the fact that they gave a very brief oral presentation and they had the posters of the slides up in the hallway of the convention for a couple of hours during that convention, that was enough to be a printed publication.
  • The reason the court thought it was a printed publication was because it said that the very people who would be most interested in that reference, that is cereal chemists, were actually the ones you were targeting the disclosure to.
  • So even though it wasn’t a very widespread disclosure, certainly under no ordinary meaning of the word “public” was it public, it was not secret and it was targeted to a group of people who are precisely those people of skill in the field.
  • So the novelty requirement, just to recap, has three components, basically.
  • Then you figure out whether or not each element is anticipated in a piece of prior art and determine whether that prior art is good prior art.
  • Whether something is good prior art again depends on the timing of that prior art, it has to be prior to the critical date, and whether it’s public knowledge.
  • Is it known or used by others or a printed publication? And if all of those things happen, then you lack novelty for your patent claim and it’s invalid or can’t be patented in the first place.

Week 4: The Law of Novelty and Nonobviousness > Novelty > Statutory Bars 

  • In any event, what I’m about to talk about in terms of statutory bars only exists for the pre-2013 versions of patent applications.
  • The general analysis for statutory bars is really the same concept as for novelty, you look for a critical date, you determine whether certain activities occur during the critical date, and evaluates on that basis.
  • Except the critical date is different for statutory bars than it is for novelty.
  • The critical date for statutory bars is one year prior to the filing date of the patent.
  • If you think about it for a minute, you can understand that a patentee, an inventor, could never invalidate or destroy the novelty of her own patented invention.
  • The patentee can do things before one year prior to the filing date of the application that would trigger the statutory bar and therefore, invalidate the patent.
  • The reason we have statutory bars, in addition to novelty, is that they encourage patentees to file their patents earlier, to get to the patent office, get it written up, and get it moving.
  • Because the earlier people apply for patents, the sooner we get the disclosure from the patents and understand what it is that their new knowledge they’re bringing to the world.
  • The earlier you file for a patent, the earlier your patent expires.
  • Another thing we do is we prevent people or discourage people from being able to essentially get the best of both worlds, which is to commercially exploit an invention, and then only later, go and seek a patent.
  • Delay their ability- delay their application for a patent in order to extend the time in which they can protect it under the patent laws, while at the same time, getting some commercial exploitation.

Week 4: The Law of Novelty and Nonobviousness > Novelty > Exceptions to Statutory Bars 

  • For example, invented a component for a car engine that was buried deep inside an engine, if I was using that in public, and even though nobody would know, if I wasn’t doing it for purposes of experimentation- which we’re going to talk about in a few moments- but if I wasn’t doing it for that reason, a and I was instead just using it generally, then that would trigger the public use bar and be a potential statutory bar against my patented invention.
  • For the sale or an offer to sell, what we mean by a sale or an offer to sell is an ordinary commercial sale, and the only trick here is an understanding that sometimes these sales or offers to sell can occur even before an invention is actually completed.
  • In Pfaff v Wells in 1998, the Supreme Court held that when you accept a purchase order for a yet to be finished invention, you can trigger the statutory bar as long as at the time the purchase order was accepted- as long as at the time that the sale, or offer to sell, or the plan to sell was consummated- that at that point, the invention was ready for patenting, by which the Supreme Court means that you already had, in your mind, all of the components of the invention and that you are ready to simply make a patent application at any time of your choosing.
  • Any offer, any sale of an invention, even if the invention has not been perfected yet, as long as it’s ready to be patented, it’s going to be a potential triggering event for statutory bars.
  • So one exception to statutory bars, and indeed the primary exception to statutory bars, is the experimental use exception, and the idea here is that it would be unfair and inefficient to have statutory bars held against inventors, when what they were doing was using their inventions for the purposes of actual experimentation.
  • The technology there was wooden road paving systems, and in order to test it, the inventor there laid down the invention- the wooden paving system- in front of a toll booth on a toll road- actually, a precursor of the New Jersey turnpike- and would come out every couple of days, and look around, and see how well it was holding up to the foot traffic, and the horse and carriage traffic, and all of the other traffic that was rolling on the invention at that time.
  • When he later went to try and enforce the patent against the City of Elizabeth, the defendants argued that that was in invalidating prior public use.
  • It would be difficult to, at that point, think of a different way you could successfully test a toll road, except by subjecting it to the ordinary traffic of a road, and so because of that, the court thought that that was not an invalidating statutory bar, and therefore, the patent was still good.

Week 4: The Law of Novelty and Nonobviousness > Novelty > Effects of the America Invents Act on Novelty 

  • The major change in the law at that time was to change the US system of priority and novelty from what we would call a First to Invent system to a First to File system.
  • A First to Invent system means, as we talked a little bit ago, that the critical date, the date against which you measure novelty in the statutory bars, and as we’ll find out in a few minutes the non-obviousness requirement, is the date of invention.
  • First to File changes that to the filing date, and there are important implications to that that we should talk about.
  • There are obviously lots of pros and cons to these two systems.
  • The United States, when we changed in 2013 from a First to Invent to a First to File system, was the last country in the world with a patent system to do so.
  • The First to Invent system has advantages, which is that it allows the inventor the time to perfect the invention, think about how the invention applies in the field or in the market, to perfect and write a patent application that represents well what that inventor thinks is going on with his or her invention, and it seems like it’s the most fundamentally fair to inventors.
  • The First to File sys- On the other hand, the First to File system also has important advantages.
  • Proving a date of invention can be a very difficult thing, requiring lab notebooks to be introduced into evidence, or good record keeping, and in many cases, inventors who probably should have been able to get the benefit of an earlier filing date simply were never able to prove it, even after years of litigation.
  • So because it was so difficult and so costly and complex, the First to File system has really taken over most of the ways that we administer patents in the world.
  • The downside of First to File is it could be potentially quite unfair to small inventors.
  • If you don’t really know, for sure, exactly whether your invention is going to work out in the marketplace or exactly how your invention is going to work in the marketplace, the First to File system works against you.
  • The other potential downside for a First to File system, is that by encouraging this rush to the patent office, this as fast as possible write up your application and get it into the patent office, it might hurt the quality of those applications.
  • In any event, the balance has been struck, and Congress thought in 2011, that it was time to get the US onto the stage with the rest of the world, and we moved to this First to File system.

Week 4: The Law of Novelty and Nonobviousness > Novelty > Incentives Under the America Invents Act 

  • So although Congress turned us from a first to invent to first to file system in 2013, our new Section 102 includes some important exceptions to first to file that we should probably talk about, as well.
  • Those exceptions are that there is a what’s called a grace period for certain kinds of disclosures when they occur within one year of the filing date of the patent.
  • If I publish, if I filed for my patent application on January 1, 2014, that means in the year 2013, in general, because of the first to file system, any prior art, anything that was published, known, or used by others and so forth, would be prior art references.
  • Or, even if somebody else made, for example, an academic paper describing my invention within that one year, I can effectively cancel out that piece of prior art by being the first one to publish before that person as long as my publication is, of course, within a year.
  • So the upshot of these exceptions means that there’s this range of time, one year prior to the filing date under the new law, where it’s very beneficial for me as the inventor and prospective patentee to publish my invention.
  • So the new system isn’t really a true first to file system, it’s not purely whoever gets to the patent office first.
  • So this was a way that Congress tried to ameliorate some of the concerns, particularly people in the small business community had and the small inventor community had, about the change to the first to file system, that it would hurt them systematically more than it would the larger companies.
  • Some research a colleague and I have done on the impact of first to file on small inventors looked at the individual inventor share in US and Canadian patents at the time the Canadians made the same change that the US just did.
  • What we did was essentially create a study where we could track how Canadian individual and small inventors behaved in response to the change from a first to invent to a first to file system.
  • The question, of course, is whether that’s going to happen in the US. And we think that indeed the first to file system generally is not friendly to small individual inventors, small companies that have less resources.
  • On the other hand, the US law does have these exceptions that I just talked about, which allows for an inexpensive way for us individual inventor or a small inventor to get a lot of the benefits of first to file, without the expense of filing a patent application, and that is to publish.

Week 4: The Law of Novelty and Nonobviousness > Nonobviousness > The Nonobviousness Requirement 

  • In order to be a valid patent, a patent must be fully and appropriately described.
  • What it does is the non obviousness requirement ensures that patents are not trivial, because it’s possible for a patent to be novel- meaning it’s new, it’s not exactly the same as something that has come before- and yet be trivial, so such a small change from the prior art as to be inconsequential in terms of technological development or marketplace acceptance or anything else.
  • In order to make sure that the patents that we grant are ones where there are real advances beyond the prior art, we have to do something more than novelty in order to screen for real advances.
  • The reason we want to make sure we get real advances patented, and not trivial advances, is that small, incremental improvements, although they’re certainly fine, don’t necessarily need to be given the incentive structure of the patent system, because there are a lot of incentives that people have to make incremental improvements.
  • The patent system is for bigger, broader, more significant advances in technology.
  • The other reason not to allow trivial patents is that they would hopelessly clog the system with all sorts of weak and unimportant patents that would be a burden administratively.
  • If I’m deciding whether to do a small and incremental improvement in my new widget- I want to build widget 1.1- or do I want to build widget 2.0? The obviousness requirement is going to encourage me to invest the money, the time, the effort, the resources into doing widget 2.0, because that’s the one I can get a patent for.

Week 4: The Law of Novelty and Nonobviousness > Nonobviousness > Origins of the Nonobviousness Requirement

  • So let’s say we have a patentable invention, and the higher up on the screen we get, the more inventive my invention is.
  • I have to overcome the scope and the content of what the prior art is.
  • Whatever’s in the prior art, I need to be able to leap over that in order to get a patent under Section 102.
  • What the obviousness requirement does is stacks on top of that hurdle over novelty an additional hurdle.
  • Because not only do I need to be an advance beyond the prior art, I need to be far enough beyond the prior art that a person of skill in the art would not see obvious differences between what I’ve done and what the prior art does.
  • There’s three inquiries that we know go into understanding how obviousness works, and these come from the famous Graham versus John Deere case of 1966, where the Supreme Court took up the matter of the obviousness requirement, and established the framework that we use today.
  • The first is the scope and the content of the prior art.
  • Well, what do we mean by the prior art? Prior art is the same as what’s defined by Section 102, meaning if it falls prior to the critical date, whether that critical date is the invention date or the effective filing date- again, that difference will depend on the timing of your patent application- but if it meets the prior art definition in Section 102, then it meets it in Section 103 as well.
  • A caveat here is that in the obviousness context, you can combine prior art together.
  • So in the novelty requirement analysis, we were talking about using one piece of prior art to evaluate the patent claim and looking for a direct match back and forth.
  • In the obviousness requirement, we do something similar, but you can combine multiple pieces of prior art, as long as those pieces of prior art are analogous to the problem.
  • You can also include in the prior art, under the obviousness context, a person having ordinary skill in the arts, common knowledge, or even common sense.
  • What this means is, in the Section 103 analysis of nonobviousness, this is a very broad conception of what we mean by prior art.
  • Next set of facts is the differences between the prior art and the invention.
  • How different is the invention at hand versus the combination of the prior art that’s available for use against it? Obviously the broader that difference, the more likely it is to be nonobvious.
  • So both sides are going to make their arguments, and the jury is ultimately going to have to resolve this as one of its factual issues.
  • Then the third factual issue is the level of ordinary skill in the art.
  • So if I have a very high skill person of skill in the art, what that means is they’re going to know a lot more about how to go from the prior art to my invention.
  • They’re going to know a lot more and be much better at bridging those gaps of obvious differences than a lower scale person.
  • So when we talk about a person having ordinary skill in the art, parties will introduce, again, expert testimony.
  • They will argue things like, this particular field of technology should have people of skill in the art with PhDs. The other side may argue, no the skill in that field is predominately people with bachelor’s degrees, or master’s degree, or maybe even just work experience.
  • Then once these three factual components are determined, typically by a jury, although not always, then the question is, putting all of these facts together- is the claim obvious? And that’s a question that the judge has to answer him or herself.

Week 4: The Law of Novelty and Nonobviousness > Nonobviousness > The Determination of Obviousness 

  • So asking a court to decide whether the known problem is an obvious solution is not really helping the court make the decision very much at all.
  • The Supreme Court went on and made some other statements, where they said yes, that the combination of prior art that yields predictable results is also obvious.
  • They thought in this case the combination of mechanical pedals and electronic sensors yielded a predictable result of this hybrid mechanical pedal and electronic sensor apparatus, which is what the invention was, and therefore, it was obvious.
  • That’s a slightly more helpful way of thinking about the problem because it suggests the parameters upon which the court should decide.
  • It’s hard to know exactly where the line gets drawn there between a obvious combination of prior art and a non-obvious combination of prior.
  • How predictable do you need? And so the emphasis on predictability is an important component of the modern obviousness requirement.
  • Above all, what the Court in KSR v. Teleflex was recommending was an expansive and very flexible approach.
  • The Court really believed that the best way to do the obviousness analysis was essentially to let judges, federal judges, determine on the basis of, again, the underlying factual considerations whether or not in each case the patent claim that was at issue in fact was a leap forward or not a leap forward.
  • This is a relatively controversial position, of course, because in general, federal judges are not technologically inclined.
  • Those that do, the likelihood that they would be trying a case that was in their field of education is very slim.
  • So what the obviousness requirement is really asking are non-technical judges to be making judgments about the technological merit, the technological advance, of a particular invention, based on the statements that I’ve just described in terms of obvious solutions or predictability, combinations, and so forth.
  • So that means the obviousness requirement is very, very difficult to administer and very difficult to predict the outcome of any particular case.

Week 4: The Law of Novelty and Nonobviousness > Nonobviousness > Hindsight Bias

  • If you have a very broad definition of prior art, which we do in the section 103 context, remember that almost anything that’s related to the field of the invention can be prior art.
  • You have what the court in KSR describes as an expansive and flexible approach to the analysis.
  • The result is that you have the potential for significant hindsight bias.
  • So back on the KSR case, it might well be that the very moment prior to KSR’s invention of this combination of mechanical pedal and electronic sensor that at that moment nobody had ever thought of it before.
  • Certainly after the fact you might look at the drawing and say, well all they did was take an electronic sensor and shove it into the spot of a mechanical pedal where the old cable would have been attached.
  • As I talked about earlier, one of the features of obviousness law is that you can pick and choose and combine prior art as long as it’s related to the field of technology, which means that almost anything can be available that’s relevant to the problem.
  • One way of controlling hindsight bias is to make it more difficult to do that and only allow you to combine references where there is some reason to do so.
  • So now although it’s possible that the courts can still use some limits on combining references, a strict limit for combining references has been disallowed under the KSR rule.
  • These are objective measures of how the invention has performed that might inform us as to whether the invention was a good invention or a trivial invention.
  • If I make a ton of money selling my widget 1.2 in the marketplace, then that might suggest something about how good my invention is, about how non obvious my invention is.
  • Maybe if I win awards or I get praised by people in my field for the achievements that are found in my invention, that again might be objective evidence of how advanced my contribution was to the field.
  • There are lots of reasons that an invention can be successful in the marketplace, including timing, distribution channels, efficiency in manufacturing, marketing, all of these things can be deeply influential as to the market acceptance of a particular technology.
  • Has nothing to do with how good the invention is.
  • So although both limiting combinations of prior arts and the use of secondary considerations are ways that the courts try and combat the hindsight bias problem and obviousness, they are sort of limited solutions at best.

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