102/103 Prior Art

Patent Law

3.18.04

Sources of 102/103 Art

• 35 USC 103: “differences between subject matter sought to be patented and the prior art”

• Graham: “scope and content of the prior art”

• What is “the prior art” or purposes of 103?

Gradual expansion of 102/103 Prior art

• 102(a): not controversial

• 102(b)– The problem of “prior art” that is not actually in

existence prior to the invention– In re Foster, p. 785: 102(b) IS a proper source

of 103 prior art

• In re Bass (1973)– 102(g) IS a proper source of 103 prior art

Oddzon Prods v. Just Toys, Inc.

• Design patent– Same standards for 102 and 103, in general

• District ct: prior disclosures to eventual patentee were 102(f) prior art– Recall Campbell v Spectrum Automation– “belt buckle” case

Is 102(f) “prior art”?

• Book, page 779– Is 102(f) more like 102(a), (b), (e), and (g)?– Or more like (c) and (d) – “loss of right?– Or not like any other provision?

• Dictum in In re Bass: 102(f) is not about “prior art”

The 1984 Amendment to 103

• Added what is now 103(c)“Subject matter developed by another

[inventive entity], which qualifies as prior art only under 102(e), (f) or (g), shall NOT preclude patentability where subject matter and claimed invention were owned by same person or subject to obligation of assignment to same person at time invention was made”

Aside: the importance of Contracts!

• Same prior art that would invalidate patent when created by independent parties will be REMOVED from prior art by contractual agreement by all parties

Legislative activity

• Cooperative Research and Technology Act of 2003, HR 2391

• Approved by IP Subcommittee 1/21/04

Other 103 Issues

• 103(b)– Biotech-specific provision

– Limited uses