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)

1. Patentability requirements
on novelty + the parts of
unobviousness
Chen JingFung (Grace)
@csie.ntut.edu.tw
2012/03/29
Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825

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. Patentability – 4 legal requirements
4 legal Law
Criteria
requirement section
Unobiousness 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 classifications
Statutory 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. 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. 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. 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. 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. 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 2012
Goldberger’s patent Goldberger issues
application 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. 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. 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. 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. Novelty (3): Specifics of Prior Art on “public
use 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. 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. 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. 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. 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. 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. 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. 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. 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. 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