A New Era in Patenting Ahead? - the University of Minnesota Law

Report
America Invents Act: Prior Art
Professor Margo A. Bagley
University of Virginia School of Law
Prior Art
• Still defined by 35 U.S.C. §102, but (a) – (g)
have been replaced with new (a) – (d)
• New provisions:
• (a) defines prior art
• (b) provides exceptions to defined prior art
• (c) incorporates CREATE ACT provisions
• (d) provides way to determine when patents
and published applications are effective as
prior art
§102 Conditions for patentability; novelty and loss of right to patent
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,
[35 USC 102(a)] or
(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, or
(c) he has abandoned the invention, or
(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, or
(e) the invention was described in (1) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an
application for patent by another filed in the United States before the invention by the applicant for patent,
except that an international application filed under the treaty defined in section 351(a) shall have the effects for
the purposes of this subsection of an application filed in the United States only if the international application
designated the United States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g) (1) during the course of an interference conducted under section 135 or section 291, another
inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention
thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
(2) before such person's invention thereof, the invention was made in this country by another
inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this
subsection, 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.
May be copied or otherwise used for educational purposes.
3
§102 Conditions for patentability; novelty and loss of right to patent
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,
[35 USC 102(a)] or
(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, or
(c) he has abandoned the invention, or
(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, or
(e) the invention was described in (1) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an
application for patent by another filed in the United States before the invention by the applicant for patent,
except that an international application filed under the treaty defined in section 351(a) shall have the effects for
the purposes of this subsection of an application filed in the United States only if the international application
designated the United States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g) (1) during the course of an interference conducted under section 135 or section 291, another
inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention
thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
(2) before such person's invention thereof, the invention was made in this country by another
inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this
subsection, 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.
May be copied or otherwise used for educational purposes.
4
§102 Conditions for patentability; novelty
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, or
Pre-AIA
§102(b)
(e) the invention was described in (1) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an
application for patent by another filed in the United States before the invention by the applicant for patent,
Pre-AIA
§102(e)
May be copied or otherwise used for educational purposes.
5
Two §102(a) Categories: (1) Public and
(2) Patent-Filing Disclosures
Under new §102(a), prior
art is (may be?) confined
to disclosures made
available to the public
prior to the inventor’s
patent filing and earlier
patent filings of others
that subsequently
became public (published
or issued).
May be copied or otherwise used for educational purposes.
§102(a)(1):
Public
Disclosures
§102(a)(2)
Patent-Filing
Disclosures
[U.S. & U.S. PCT]
6
Pre-AIA
§102(b)
(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
Geographic
patent in the United States, or
Limitations
Removed
(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, or
Public
Accessibility
Required
(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, or otherwise available to the public more than one year prior
to the date of the application for patent in the United States, or
Effective
Filing Date
Added
(b) (a)(1) 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, or otherwise available to the public more than one year
prior to the date of the application for patent in the United States before the effective filing date of
the claimed invention, or
May be copied or otherwise used for educational purposes.
Post-AIA
§102(a)(1)
7
New §102(a)(1) retains some language
from existing §102(b) –
(a) Novelty; Prior Art. - A person shall be entitled to a patent
unless (1)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 claimed invention; or . . .
The new requirement “or otherwise
available to the public” takes all of
existing §102(b) prior art, and (1)
limits what would have been prior
art through a public accessibility
limitation and (2) expands what was
formerly prior art by removing the
“in this country” limitation.
May be copied or otherwise used for educational purposes.
New §102(a)(1)
differs from
existing §102(b) by
using “effective
filing” date in lieu
of “one year” date.
“Effective
filing date”
and “claimed
invention”
are defined
terms in
§100.
8
“Secret/Non-informing” Prior Art
Gone?
• Metallizing Eng. v. Kenyon: secret commercial use of
an invention by the inventor is a public use under
102(b) and bars entitlement to a patent if occurs
more than one year before U.S. filing date.
• Egbert v. Lippman: A use of the invention that does
not inform the public about the invention is a public
use under 102(b) and bars entitlement to a patent if
occurs more than one year before U.S. filing date.
• AIA legislative history indicates neither prior art
under new 102(a)
Understanding new §102 prior art
requires starting with §100
• New §100 provides definitions for–
– “claimed invention”
– “effective filing date”
May be copied or otherwise used for educational purposes.
10
May be copied or otherwise used for educational purposes.
11
What is needed to make a disclosure
“otherwise available to the public”?
• New term of art in U.S. patent law.
• Legislative history:
• “in section 102 the ‘in this country’ limitation as
applied to ‘public use’ and ‘on sale’ is removed,
and the phrase ‘available to the public’ is added
to clarify the broad scope of relevant prior art, as
well as to emphasize the fact that it must be
publicly accessible.” *
*- pp. 42-43, House Report to Accompany H.R. 1249 (June 1, 2011).
May be copied or otherwise used for educational purposes.
12
New §102(a)(2) retains some language
from existing §102(e) –
(a) Novelty; Prior Art. - A person shall be entitled to a patent
unless (2) the claimed invention was described in a patent issued
under section 151, or in an application for patent published or
deemed published under section 122(b), in which the patent
or application, as the case may be, names another inventor
and was effectively filed before the effective filing date of
the claimed invention.
“Deemed published” incorporates
§374 PCT filings.
“effectively filed” eliminates Hilmer.
“Issued under
§151” references
U.S. patent filings.
May be copied or otherwise used for educational purposes.
“Names another
inventor” is
synonym for
“application … by
another.”
New
§102(a)(2)
references
patents
first.
13
“Deemed published” accounts for U.S.designating PCT patent applications
§374. Publication of international application
The publication under the treaty defined in
section 351(a) of this title, of an international
application designating the United States shall
be deemed a publication under section
122(b), except as provided in sections 102(e)
and 154(d) of this title.*
*- Amended under Sections 3(g)(4) and 20(j)(1) of the AIA.
May be copied or otherwise used for educational purposes.
14
“Effectively filed” defined in §102(d)
• §102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS
PRIOR ART.—For purposes of determining whether a patent or
application for patent is prior art to a claimed invention under
subsection (a)(2), such patent or application shall be considered to
have been effectively filed, with respect to any subject matter
described in the patent or application– ‘‘(1) if paragraph (2) does not apply, as of the actual filing date
of the patent or the application for patent”
– “(2) if the patent or application for patent is entitled to claim a
right of priority under section 119, 365(a), or 365(b), or to claim
the benefit of an earlier filing date under section 120, 121, or
365(c), based upon 1 or more prior filed applications for patent,
as of the filing date of the earliest such application that
describes the subject matter
May be copied or otherwise used for educational purposes.
15
AIA
102(b) Exceptions
to 102(a) Prior art
§102(b)(1)
exceptions
deal only
with
§102(a)(1)
prior art.
Priordisclosures as
prior art are
subject to two
separate
“Exceptions.”
Inventor-friendly and collaboration-friendly
features of U.S. law codified as “exceptions” to
prior art – one set for prior disclosures and a
second for prior-filed patent filings of others.
May be copied or otherwise used for educational purposes.
§102(b)(2)
exceptions
deal only
with
§102(a)(2)
prior art.
Prior-filed,
later-published
U.S./U.S. PCT
patent filings
are subject to
three separate
“Exceptions.”
17
102(b)(1)
A disclosure made 1 year or less before the effective
filing date of a claimed invention shall not be prior art
to the claimed invention under[102(a)(1)] if:
(A) “the disclosure was made by the inventor or joint
inventor or by another who obtained the subject
matter disclosed directly or indirectly from the
inventor or a joint inventor” or
(B) “the subject matter disclosed had, before such
disclosure, been publicly disclosed by the
inventor or a joint inventor or another who
obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor”
May be copied or otherwise used for educational purposes.
18
Public disclosures not more than 1year before “effective filing date” –
A disclosure under §102(a)(1) is excepted if:
(A) “the disclosure was made by the inventor or
public
represents
jointThe
inventor
ordisclosure
by another who
obtained the
subjectthe
matter
disclosed
directly
or–indirectly
inventor’s
own
work
§102(b)(1)(A)
from the inventor or a joint inventor“ or
(B) “the subject matter disclosed had, before such
Adisclosure,
subsequent
disclosure
by anyone
else is
been
publicly disclosed
by the
inventor
joint respect
inventorto
orsubject
another matter
who
not
prior or
artawith
obtained
the subject
matter
disclosed
directly or
in
an inventor’s
earlier
public
disclosure.
indirectly from the inventor or a joint inventor”
§102(b)(1)(B)
May be copied or otherwise used for educational purposes.
19
102(b)(2)
A disclosure shall not be prior art to a claimed invention
under [102(a)(2)] if:
(A) “the subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor” or
(B) “the subject matter disclosed had, before such subject
matter was effectively filed under subsection (a)(2),
*
been publicly disclosed by
the inventor or a joint
inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a
joint inventor” or
(C) “the subject matter disclosed and the claimed
invention, not later than the effective filing date of the
claimed invention, were owned by the same person or
subject to an obligation of assignment to the same
person.”
May be copied or otherwise used for educational purposes.
20
Earlier (not-yet-public) patent filings NOT prior
art as of when effectively filed if …
102(b)(1):
An earlier patent filing under §102(a)(2) is excepted if:
§102(b)(2)(A)
The inventor’s own work.
(A) “the subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor“ or
Earlier
patent
filings
others
the
(B) “the subject
matter
disclosed
had, of
before
such to
subject
matter
was effectively
filed under
subsection
(a)(2), been
extent
of
inventor’s
public
disclosures
publicly disclosed by the inventor or a joint inventor or
another who
thethose
subjectpatent
matter disclosed
thatobtained
precede
filings.
§102(b)(2)(B)
directly or indirectly from the inventor or a joint
inventor” or
The inventor’s
co-workers
and invention,
(C) “the subject
matter disclosed
and the claimed
not later than the effective filing date of the claimed
research
collaborators
patent
filings.
invention,
were
owned by the same
person
or subject to
an obligation of assignment to the same person.”
§102(b)(2)(C)
May be copied or otherwise used for educational purposes.
21
How 2nd to file but 1st to disclose can beat 1st to file
Disclosure “by or obtained from”
Inventor Susan
Thomas FITF
§102(b)(1)(A)
§102(b)(2)(B)
Public use
§102(a)(1)
12 mos.
Pat.
App.
Filed
Tom’s US
application
published
Susan’s
U.S. Patent
Susan 2nd ITF
Susan avoids public use through §102(b)(1)(A); Susan’s public use avoids Thomas’s
publication through §102(b)(2)(B) and defeats Thomas through § 102(a)(1);
First inventor to file loses because other inventor disclosed first.
22
AIA
102(c)
§102(c)
The CREATE Act from 2004
remains substantively unchanged,
except that statute is now
clarified that parties to the joint
research agreement must have
made both the claimed invention
and the prior-filed subject matter
that is excluded as prior art.
Additionally, the test for
applicability is that the joint
research agreement be in effect
as of the effective filing for the
claimed invention with respect to
which the exclusion from prior art
applies.
May be copied or otherwise used for educational purposes.
24
§102(c)
The CREATE Act from 2004
remains substantively unchanged,
except that statute is now
clarified that parties to the joint
research agreement must have
made both the claimed invention
and the prior-filed subject matter
that is excluded as prior art.
Additionally, the test for
applicability is that the joint
research agreement be in effect
as of the effective filing date for
the claimed invention with
respect to which the exclusion
from prior art applies.
JRA must be executed before the
effective filing date and claimed
invention and subject matter excluded
from prior art must be made (or
developed) by parties to the JRA.
Claimed invention must be made
pursuant to activities within the
scope of the JRA.
Application must name parties to JRA.
May be copied or otherwise used for educational purposes.
25
AIA
35 USC §103
Sec. 103. Conditions for patentability; non-obvious subject matter
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if
the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.
(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a
biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of
this section shall be considered nonobvious if –
(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications
having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of
assignment to the same person.
(2) A patent issued on a process under paragraph (1) –
(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent,
notwithstanding section 154.
(3) For purposes of paragraph (1), the term “biotechnological process” means –
(A) a process of genetically altering or otherwise inducing a single– or multi-celled organism to –
(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of
section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the
time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been
owned by the same person or subject to an obligation of assignment to the same person if—
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the
claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research
agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered
into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed
invention.
27
May be copied or otherwise used for educational purposes.
Sec. 103. Conditions for patentability; non-obvious subject matter
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if
the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.
(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a
biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of
this section shall be considered nonobvious if –
(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications
having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of
assignment to the same person.
(2) A patent issued on a process under paragraph (1) –
(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent,
notwithstanding section 154.
(3) For purposes of paragraph (1), the term “biotechnological process” means –
(A) a process of genetically altering or otherwise inducing a single– or multi-celled organism to –
(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of
section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the
time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been
owned by the same person or subject to an obligation of assignment to the same person if—
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the
claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research
agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered
into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed
invention.
28
May be copied or otherwise used for educational purposes.
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived
by the manner in which the invention was made.
Pre-AIA
§103(a)
Simplify,
Clarify
Language
(a) A patent may not be obtained notwithstanding that though the invention is not identically disclosed or
described as set forth in section 102 of this title, if the differences between the claimed invention subject matter
sought to be patented and the prior art are such that the claimed invention subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The terms “claimed invention” and “effective
filing date” are now defined in §100;
“disclosed” is now explicitly used in §102 as a
generic term inclusive of “described.”
Add the
Effective
Filing Date
A patent may not be obtained notwithstanding that though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the differences between the claimed invention
subject matter sought to be patented and the prior art are such that the claimed invention subject matter as a
whole would have been obvious before the effective filing date of the claimed invention at the time the invention
was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall
not be negatived by the manner in which the invention was made.
Post-AIA
§103
May be copied or otherwise used for educational purposes.
29
Conclusions
• Prior art:
– many new features, terms
– Several issues for court to resolve
Acknowledgements
• Special thanks to Tom Irving, Finnegan,
Henderson, Farabow, Garrett & Dunner, LLP
(along with Joe Matal, Senate Judiciary
Counsel for Senator Jon Kyl; and Bob
Armitage, Senior VP and General Counsel, Eli
Lilly); for sharing slide content
Is It a Public Use Under current
102(b)?
Actor
Informing
Use
NonInforming
Use
Secret Use
Applicant
Yes
Pennock v.
Dialogue
Yes
Egbert v.
Lippman
Yes
Metallizing
Eng’g
Third Party
Yes
Elec.Stor.
Battery v.
Shimadzu
Yes
No
Abbott Labs. Gore v.
v. Geneva
Garlock
32
Is It a Public Use Under AIA 102(a)?
Actor
Informing
Use
NonInforming
Use
Secret Use
Applicant
Yes
Pennock v.
Dialogue
No
Egbert v.
Lippman
No
Metallizing
Eng’g
Third Party
Yes
Elec.Stor.
Battery v.
Shimadzu
No
No
Abbott Labs. Gore v.
v. Geneva
Garlock
33
The House Report
(footnote 20, p. 43
references the Kyl
statement at
S1368-S1371
(March 8, 2011)
exhaustively sets
forth the rationale
for the “public
accessibility”
criteria to be used
to determine §102
prior art.
Uses an existing
body of welldeveloped law in
preference to
adopting a new
legal standard.
May be copied or otherwise used for educational purposes.
34
Arguments in favor of AIA eliminating
Metallizing Engr and Egbert:
• -if 102(a)(1), were not read to eliminate secret-activities prior art, it
would impose forfeiture of a patent for an invention that was only sold or
disclosed, the day before patent filing, to one person, who promptly took
that secret to his grave while at the same time, 102(b)(1)’s grace period
would allow the patenting of an invention that was sold or otherwise
made available to the whole world for an entire year.
• -Post grant review is explicitly limited to FTF patents because first-toinvent patents, among other things, raise “secret-prior-art issues that
would be difficult to address in an administrative proceeding.” (Cong.
Rec.), so if Metallizing is not gone, PGR would have to deal with secret
prior art issues.
• -limitations in Sec. 18 business methods review program that limit prior
art for FTI patents to publicly available prior art, but do not make any
carve-outs for FTI patents (since they would not be subject to any secret
prior art anyway)
Arguments that AIA did not eliminate
Metallizing or Egbert:
• 1) It is a standard canon of statutory construction that reenactment of
statutory language with a known legal meaning continues the known
meaning.
• (2) While one sentence in a Senate colloquy does support the opposite
view, the entirety of that colloquy was devoted to discussing the grace
period. Nothing said there suggested that Congress wanted to undo a
fundamental principle of patent law.
• 3) Another accepted canon of statutory construction is that Congress
does not “hide elephants in mouseholes.” Overturning two centuries of
consistent law would be a big elephant to hide in a colloquy.
• (4) Remarks in legislative history are not the statutory text. Indeed,
remarks are not always reliable because the speakers could be focusing
on a different issue (as is true here).
In re Wertheim is gone; earlier patent filings not subject
to “enablement” before filing date of claimed invention
Filing/Publication Dates (Roman Numerals)
A
I
A
+
B
II
Provisional
Filings
A
+
B
+
C
A+C+D
V
IV
Nonprovisional
Publishes
III
A, B, C, and D =
separate
embodiments
A effectively filed on I.
C effectively filed on III.
D effectively filed on IV.
B becomes prior art when published (V).
May be copied or otherwise used for educational purposes.
In re Wertheim, 646 F.2d
527 (CCPA 1981) limited
what could be prior art,
for a description
appearing in a U.S.
patent as of its filing
date, to subject matter
that was sufficiently
enabled so that a patent
could be issued on that
subject matter on the
day of filing.
37

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