Chapter Ⅱ　NOVELTY

A.Introduction

Novelty as a basic requirement for patent is derived from the Constitution.It is specified in § 102 of the U.S.Patent Law.

Prior to March 15,2013,the novelty requirement in the U.S.patent practice was known to be“first-to-invent,”as opposed to the“first-to-file”practice throughout the world.This fundamental change makes the U.S.practice in line with the rest of the world.

But why the difference? Let’s look at the constitutional provision in greater detail.The constitutional language is,in Article I,Section 8,Clause 8,that

The Congress shall have the Power … To promote the Progress of Science and useful Arts,by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Here the word“inventors”suggests two implications.The verb to invent means by definition“to make for the first time.”In other words,the act of making has to be for the first time,hence,new or novel.Anything that is not made precisely for the first time is simply not new,hence,old,or in patent sense,anticipated.Secondly,the patent right has to be secured to the inventors in person,and not anyone else.For this reason,it has always been held under the U.S.practice that only the true inventor,the person who has actually made the thing for the first time,not someone who financed the invention,not a corporation that hires the inventor,may file a patent application.For this reason,also,a person who claims to have made an invention earlier than others over the same invention is entitled to the patent.

With this understanding,the U.S.patent law in its first version of 1790 included the requirement for“new and useful arts,”as drafted by the founding father Thomas Jefferson himself.

For historical reasons,this novelty requirement carries the English tradition since the Statute of Monopolies of 1623 which the English Parliament enacted to curtail the royal power,in reaction to the increasing economic power of Queen Elizabeth I by collecting large sums of royalties through free issuance of letters patent to whoever were willing to pay the sum in order to obtain a monopoly over any trade.Under that Statute,all forms of anti-competitive monopolies were declared illegal,except the exclusive right obtained for technical inventions.

The same idea against anti-competitive monopolies was part of the reason for the American Revolution,and as an inheritance of the traditional English common law,was deeply embedded in the American social and jurisprudential philosophies,and clearly reflected in the Constitution.

But over the centuries of patent practice,this has created a complicated procedure for determining novelty for the invention,which calls for reform.

First of all,the invention,although first made by the true inventor for the first time,must not be made known to the public,either in the form scientific publication or disclosed in a patent application.There is a slight distinction,however,as to being known and disclosed in a patent.The former,a more widely distributed knowledge,is limited to U.S.territories,while the latter,anywhere in the world.This makes it harder for foreigners to challenge a U.S.patent for lack of novelty based on public knowledge or use,for one reason that evidence of knowledge or use without printed documents in foreign countries are hard to come by,and particularly so if in a given foreign country where there is no U.S.-style discovery procedures.For another reason,it serves a selfish purpose to protect U.S.patents from foreign challenges where the evidence is hard to verify.On the matter of printed publications and published patents,there is no difference between the evidence found in the U.S.or in a foreign country because the evidence is clear and irrefutable.

Another major difference between the U.S.practice and international practice is that the critical date of the invention which is calculated on the date when the invention is actually made,which can also be seen as stemming from the word inventor.The international practice takes the application filing date as the invention date,while the U.S.practice takes it as the“constructive”date of invention,a prima facie date,which of course means that in the lack of evidence to prove the contrary,the filing date is the date of priority.But that’s the problem,because it is not necessarily the actual date when the invention was made in the long process of carrying out the invention.An inventor may start to notice a technical problem,for which he becomes preoccupied to figure out a solution by laying his hands on the work (date of conception); he may not be successful in the beginning,and he has to continue experimenting with his solutions (continued diligence),until one day,he comes to a turning point when his solution works (reduction to practice);but he may still need to refine,test and improve his invention to make it industrially practicable (not necessarily to the point of commercially marketable).If an inventor has done all this,with proper journal for his work to be the evidence,he would prevail in an interference proceeding against another over the same subject matter of the invention,and secure to himself the right to filing the application,because his invention date can be antedated all the way back to his earliest date of conception – the beginning of the long process for making the invention.That could be years before the actual filing date of a patent application.Imagine this: a foreigner files a patent application in the U.S.before a U.S.competitor does,but the U.S.competitor can successfully challenge the novelty of this foreigner’s application by introducing evidence of his earlier work on the invention,whereas,it pretty much would not work for the foreigner.

This“first-to-invent”practice,good for the true inventor though,has been for years the target of international criticism because it not only puts foreigners on an unequal footing against U.S.domestic competitors,but also makes the life of inventors extremely hard since they have to keep piles upon piles of work records in case one day they may be useful in proving a date way back to the beginning of their inventive process.

The Leahy-Smith America Invents Act of 2011 (AIA) made fundamental changes to the U.S.patent regime since 1952,most notably,switching the“firstto-invent”to“first-inventor-to-file”effective as of March 16,2013.The new system significantly expands the range of prior arts to include public use,sales,publications,and other disclosures by others available to the public anywhere in the world as of the filing date,except publication by inventor himself within one year prior to filing.

It has to be noted,however,the new change will be effective only to those patent applications filed on or after the effective date of March 16,2013.As to those filed before that date,the old version still applies,which will remain effective for at least 20 years until March 15,2033.For this reason,the traditional novelty analysis may still be applicable parallel to the new analysis yet to be developed by courts.

Another change to § 102 is the so-called“interference”proceeding,which will be discussed in the chapter for post-issuance matters.

Finally,this new regime,like any laws passed by U.S.Congress,will have to be tested in court for its constitutionality.For reasons given above,a person who believes that he has invented earlier but filed later,would be denied inventorship under the first-inventor-to-file.There either has to be an amendment to the Constitution,or a new Supreme Court interpretation of the meaning of“inventor,”or the AIA might fail.

A Comparison of § 102 Pre-AIA and the AIA versions

35 U.S.C.102 (pre-AIA)

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

(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.

35 U.S.C.102 (under AIA,the 2011 Amendment)

(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

(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.

(b) Exceptions.–

(1) disclosures made 1 year or less before the effective filing date of the claimed invention.– 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 subsection (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.

(2) disclosures appearing in applications and patents.– A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if –

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(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.

(c) Common Ownership Under Joint Research Agreements.– Subject matter disclosed 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 in applying the provisions of subsection (b)(2)(C) if –

(1) the subject matter disclosed was developed and the claimed invention was made by,or on behalf of,1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(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; or

(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.

(effective March 16,2013.)