First to File

M. Henry Heines, PhD, JD is an Attorney at Law, specializing in patents, with almost 40 years’ experience in the field. His expertise includes patents in the areas of organic and inorganic chemistry, chemical engineering, mechanical engineering, and biotechnology. He is the author of two books, 15 articles, and numerous presentations on the subject of patents in specialized engineering fields. He also authored the Patent Column featured in the AIChE magazine, CEP for numerous years.

List of Figures ix

List of Tables xi

Preface xiii

Introduction xvii

About the Author xix

1. The First-to-File Rule: Evolution and Application 1

1.1 History of the First-to-File Rule in the United States 2

1.2 “Who’s on First?”: The Rule and Its Application 5

1.3 Adapting Business Routines to the First-to-File Rule 7

2. Prior Art before and after the AIA: Two Standards Compared 9

2.1 Prior Art and the First-to-File Rule 9

2.2 “But is It Art?”: The Art of Prior Art 10

2.3 And is It “Prior”?: Pre-AIA Law vs. the AIA 11

2.3.1 U.S. Patents and Published U.S. Patent Applications 11

2.3.2 Patents and Patent Applications Other than those of the United States 14

2.3.3 Other Published Literature 16

2.3.4 Commercial Activities 17

2.3.5 Otherwise Available to the Public 21

2.4 A Servant of Two Masters?: The “Effective Filing Date” and Its Role in Determining the Governing Rule 21

2.5 Conclusion 23

3. Creating One’s Own Prior Art: Self-Imposed Barriers to Patentability 25

3.1 The On-Sale Bar 26

3.1.1 Ready for Patenting? 26

3.1.2 Exceptions for Experimental Use 33

3.2 The Publication Bar: Publish and Perish? 35

3.2.1 Posting on an Internet Server 36

3.2.2 Slide Presentations and Posters at a Conference 37

3.2.3 Submission of a Thesis to a University Library 38

3.2.4 Grant Proposals 39

3.3 Observations 41

4. Canceling Prior Art and Other Benefits of Record Keeping 42

4.1 Derivation Proceedings 42

4.2 Disqualifying Reference Materials as Prior Art 45

4.3 Records Showing Collaboration 46

4.4 Records of Public Disclosures and Commercial Uses 48

4.5 Laboratory Notebooks 50

5. Inventing in an Employment Environment: The AIA’s New Recognition of Employer Interests and Project Management 52

5.1 Project Management and the New Definition of Prior Art 53

5.2 Allowing the Employer to Stand in for the Inventor 54

5.3 What Constitutes an Obligation to Assign? 56

5.4 Implying an Obligation to Assign When There is No Express Agreement 60

5.5 Having a “Sufficient Proprietary Interest” Other than by Assignment or Obligation to Assign 63

5.6 When No Assignment, Obligation to Assign, or Proprietary Interest: The “Shop Right” 63

6. The Novelty Threshold: Can You Recognize It When You See It? 67

6.1 Anticipation and the “All Elements in a Single Reference” Rule 68

6.1.1 “Incorporation by Reference” of the Missing Element from Another Source 70

6.1.2 Inherent Disclosure of the Missing Element 72

6.2 Novelty in the Arrangement of Parts 73

6.3 Another Argument Against Anticipation: The “Nonenabling Reference” 77

6.4 Caution: A Reference Can Anticipate an Invention Even if It “Teaches Away” from the Invention 79

6.5 Novelty versus Anticipation among Genus, Subgenus, and Species 84

6.5.1 Species Anticipating a Genus 84

6.5.2 Specific Value Anticipating a Range 85

6.5.3 “Shotgun” Disclosures in the Prior Art 85

6.5.4 Species or Subgenus Novel over a Larger, Encompassing Genus 86

6.5.5 Narrow Range Novel over a Broad Range Encompassing the Narrow Range 86

6.6 Are We Done? 87

7. Confronting the Prior Art: What Makes an Invention Nonobvious? 88

7.1 “But Every Invention is a Combination of Old Elements!” 90

7.1.1 Synergism and Changes in Function 90

7.1.2 “But Why Would a Munitions Manufacturer Go to a Horse Trainer (for the Missing Element)?” 92

7.1.3 “But Nobody Knew What the Problem Was (Before I Came Along)!” 94

7.1.4 “But They Said It Couldn’t Be Done!” 95

7.2 Pursuing the Unpredictable 99

7.2.1 Predictable Now but Unpredictable Then? 101

7.2.2 Finding a Needle in a Haystack 103

7.2.3 Unpredictability versus Optimization 105

7.3 In Hindsight (and Other Obvious or Nonobvious Thoughts) 107

8. The View from the Infringer’s Side: Challenging a Patent’s Validity 108

8.1 Do You Really Want to Go to Court? 109

8.2 Selecting Claims 111

8.3 Options for Challenge before the Patent is Granted 115

8.4 Options for Challenge after the Patent is Granted 118

8.4.1 Citation of Prior Art and Written Statements 118

8.4.2 Post-Grant Review and Inter Partes Review 119

9. Patent Eligibility: Pushing the Envelope on Subject Matter Appropriate for Patenting 122

9.1 Medical Diagnostic Methods 123

9.2 Computer-Implemented Processes 127

9.3 Business Methods 130

9.4 The AIA’s New Procedure for Challenging Business Method Patents 133

9.5 Conclusion: A Rule for Patent Eligibility? or a Case of “I’ll Know It When I See It”? 135

10. Selected Topics in Patent Strategy 139

10.1 Provisional Patent Applications 139

10.2 Strategies in Claim Construction 145

11. Patents and Beyond: The Variety and Scope of Intellectual Property 157

11.1 Trade Secrets 157

11.1.1 Scope 159

11.1.2 The Right of an Individual to Use Fundamental Skills 159

11.1.3 Comparing Trade Secrets to Patents 160

11.2 Trademarks 163

11.2.1 Choosing a Trademark 163

11.2.2 Securement, Maintenance, and Infringement of Trademark Rights 164

11.3 Copyrights 164

11.4 Design Patents 166

11.5 IP Coverage for Plants 167

11.6 Conclusion 167

Appendix A Selected Fees Charged by U.S. Patent and Trademark Office and Other U.S. Agencies for Intellectual Property as of January 1, 2014 170

Appendix B Patent Searchers 175

Acronym Glossary 178

Glossary 179

Bibliography, Websites, and Blogs 185

Patents and Published Patent Applications Cited 188

Cases Cited 191

Index 194