HYPOTHETICAL EXAMPLE 2 - Patent law

Since we now know the invention dates for the three claims, let’s extend the preceding hypothetical. In particular, we are going to use the various dates established for the inventions and the patent application filing to figure out how certain types of prior art might affect the ability of our chemist to patent his three inventions. To fully cover this topic, we will consider seven different scenarios:

  1. On October 1, 2005, a paper written in a Japanese chemical journal (written in the Japanese language) was published, describing the synthesis and structural identification of the exact compound A described in claim 1. The publication did not detail or suggest any potential biological activity.

  2. The same facts as part 1) except the journal article’s publication date was September 24, 2005.

  3. On July 4, 2006, a paper written in an Australian chemical journal was published, describing the synthes is and structural identification of the exact compound described in claim1. The publication also mentioned that the compound demonstrated anti cholinesterase activity, and its potential use for cognition enhancement was described in excruciating detail. No other biological activity was disclosed.

  4. On May 11, 2005, Dr. Klaus, a German inventor working in Germany, conceived the same compound described in claim 1. He diligently worked on making the compound until June 3, 2005, when he completed the synthesis. On June11, 2005, he had submitted the compound for testing as a serotonin-reup take in hibitor, and on June 15, 2005, he received notice that the compound was active. On July 17, 2005, Klaus filed a patent application in the United States with a description of the compound and its preparation as well as a description of its use as an antidepressant, including the supporting data for that use. Claims were included that were directed to the compound as well as a method of using the compound as an antide pressant.

  5. On January 4, 2005, a chemist in Germany, Dr.Warner, conceives the exact same compound as the compound of claim 1 of our hypothetical patent application.The conception was duly recorded and witnessed, and it was also noted that the compound should be good for treating depression as well as cognition enhancement. The compound was soon thereafter synthesized and tested for activity in both in vitro and in vivo models believed to be predictive of treating depression and cognition enhancement. Analysis indicating that the compound was very likely to work for the intended indications was completed by February17, 2005. On March 7, 2005, a patent application was filed in Germany as a German national patent application. A PCT patent application was filed on March 1, 2006, which claimed priority to the earlier national filing. The PCT patent application was published (in the English language) on September 15,2006, and designated a number of countries, including the United States. The PCT application was subsequently abandoned and a national application was never entered in the United States. A German patent to the claimed subject matter eventually issued on April 1, 2007.

  6. Soon after conceiving the invention, our ever-optimistic Acme chemist send san abstract to the American Chemical Society for an upcoming meeting. The abstract is accepted online immediately and posted on the Internet the same day. The abstract describes the proposed preparation of the compound together with a description of its possible utility as an antidepressant. The chemist lists his name and two of his lab associates who will help him in making and testing the compound. The date the abstract is posted on the Internet is June 1, 2005.

  7. Apparently our chemist was unaware of this but on April 1, 2006, a different chemist in his same organization but at a different research site had submitted a patent application in the United States describing and claiming an obvious variation of his compound together with methods of using the compound to treat bacterial infections.

To discuss the impact of these potential prior art references, it will be helpful to have the most relevant dates for our chemist’s invention conveniently listed as instable below.

HYPOTHETICAL-EXAMPLE

TABLE : The Relevant Dates Needed to Determine the Impact of
Prior Art References on the Patent Application Filing

The facts for part (1) of this hypothetical indicate that the Japanese publication occurred on October 1, 2005, 2 days day short of 1 year before our chemist filed his patent application (what a coincidence!). Does it matter that the prior art publication is in Japanese? The answer is no, the language of publication is of potential consequence only for §102(e), but this is not a patent or patent application so §102(e) does not apply.In this instant, we simply have a published paper appearing less than 1 year before our chemist’s patent filing. Because it is less than 1 year, §102(b) will not apply. Glancing through the sections, we see that only §102(a) could possibly apply. Notice that§102(a) applies to a publication anywhere and does not include a language limitation.Fortunately for the chemist, §102(a) is not an absolute bar to patentability, rather he still has a chance to establish that his invention occurred before the publication date of the Japanese paper. To do this successfully, he will need to submit an affidavit(preferably with the assistance of counsel) establishing that he invented the compound before the publication date of the paper, which he should be able to do given the documentation of his conception date and the fact that he was diligent from conception through the reduction to practice.47 In regard to the claimed methods of use, the inventor will not need to establish his invention date because those method of use claims are probably not affected because the prior art makes no reference to any method of using the compound.

In part (2) we have the same facts as part (1) except that the publication date has been moved one week earlier to September 24, 2005. What a difference a week makes!The reference has a publication date more than 1 year before the patent application filing date and is no wa §102(b) reference instead of a §102(a) reference. This means there is no possibility of proving prior invention, and the reference is admissible for all that it discloses. Since the reference provides an enabling disclosure for the preparation of the compound, claim 1 of the chemist’s patent application is no longer novel in view of this §102(b) reference and thus cannot be patented. The novelty of claims 2 and 3 are not affected by the reference because it does not contain any description or teaching regarding the use of the compounds for treating depression or in cognition enhancement. So he can still patent the use of the compound in these diseases, but he can no longer patent the compound itself.

In part (3) we learned that not only was the preparation and identification of the compound disclosed but its activity as an anti cholinesterase useful for cognition enhancement was disclosed as well. Since the effective publication date of the journalarticle was July 4, 2006, less than 1 year before the filing date of the patent application,the reference is citable only under §102(a). This paper does not affect the chemist’sability to patent the compound itself. He still invented the compound before the publication date of the reference and a §102(a) reference can be antedated. Likewise,the method of using the compound as an antidepressant will probably not be affected by the paper’s disclosure of anti cholinesterase activity for at least two reasons. First,the chemist can show prior invention of this method (May 6, 2005) and second,there is nothing in our hypothetical to suggest that a prior art disclosure of the anticholinesterase activity of the compound should affect the patentability of a method claim for treating depression. The only issue remaining is the patentability of the third claim in view of this reference. The prior art reference discloses the same method described in the third claim—a method of enhancing cognition using the claimed compound. We have already determined that this method could be attributedan invention date of July 15, 2006. Since the prior art publication was already published before July 15, 2006, it is not possible for the chemist to swear behind the reference, and as a result, the §102(a) rejection will stand for cognition enhancement.

Does this mean that our Acme chemist should give up on any notion of developing the compound as a cholinesterase inhibitor? The answer is probably not. This is not a situation in which the specific commercial use of the compound is blocked by what is in the prior art because the prior art was a reference in a trade journal.It is not somebody else’s valid patent that is blocking them. Rather, the prior art reference works only to negate their own patentability for the specific subject matter but not their own freedom-to-operate. Assuming they get claim 1 issued, they still will have the ability to exclude others from making, using, or selling the specific compound for any purpose, including the treatment of cognition. So what is the point of trying to get claim 3 if they can already block anybody by having the claim to the compound? The first reason is defensive in nature. If Acme had filed their patent application but did not disclose or claim the methods of enhancing cognition, they could leave themselves open to another competitor seeing their patent application when it publishes and recognizing that the compound might be good for cognition enhancement. If the competitor then was able to obtain a patent to that specific method with that specific compound, they could block Acme from later trying to commercialize that method. By Acme filing the methods and the compound, they have a better chance of preempting their erstwhile competitors from staking out claims in their method of use space. Second, it is not always possible to know what prior art might come up during the course of patent prosecution or patent litigation.

While you may think you have a novel compound and strong claim to its structure,it is possible that for some reason the claim to the structure might be found to benonpatentable or invalid but the claim to the method might still be patentable or valid. In such a situation, the method claim might serve as an enforceable backstop in situations where the compound claim falters.

In part (4) we are not dealing with a publication per se but rather a competition between two different inventive entities (a §102(g) scenario) but the patent office has no way of knowing who invented the subject matter first absent conduction of an interference proceeding. As a practical matter, what is likely to happen in this scenario is the USPTO will become aware through its internal processes that two patent applications claiming the same subject matter are co-pending. Assuming the facts described in our hypothetical were provable in the interference proceeding, the Acme inventor will win the priority contest since he conceived the compound and method of using it to treat depression first and was diligent through its reduction to practice. He can rightfully claim his date of conception (May 6, 2005) as his date of invention, whereas Klaus can claim May 11, 2005. Klaus will thus receive a rejection based on §102(g), and Acme will receive a patent with all three claims.

In part (5), we learn that a German chemist apparently invented the subject matter first, having conceived of the invention on January 4, 2005, and reduced it to practice by no later than February 17, 2005. Given the short time between the actual conception and the compound synthesis and testing, one can assume adequate due diligence was exercised such that the German chemist’s invention date would be the date of conception. We also learned that he filed a patent application to the identical subject matter as a German patent application in the German patent office on March 7, 2005.Subsequently, a PCT international application containing the same subject matter was filed on March 1, 2006, and that application properly claimed priority to the earlier filed German patent application. The international PCT application designated the United States among many other countries and was published in the English language on September 15, 2006. The patent application was then abandoned in the United States though it eventually issued as a patent in Germany on April 1, 2007.

This hypothetical contains a number of relevant facts and dates and requires us to analyze the different activities under a number of different 102 sections. The most logical way to proceed would be to begin chronologically from the beginning. To help organize our analysis, we will list all of the potentially relevant dates of the priorart in chronological order.

  1. Conception date: January 4, 2005

  2. Reduction to practice (actual): February 17, 2005

  3. Invention date: January 4, 2005

  4. German patent application filed: March 7, 2005

  5. PCT international application filed: March 1, 2006

  6. PCT international application published (in English): September 15, 2006

  7. German national application issues: April 1, 2007

As we have already learned, prior art does not mean just publications and patents but can be knowledge, use, and sales as well; it can also be proof of a prior invention by another party under the appropriate circumstances. Accordingly, let’s begin by examining the prior art effect of the German invention itself. As we can see from the facts given, the German chemist invented the same subject matter before the date of the invention of the subject matter by the Acme chemist (January 4, 2005, for all the subject matter of the German invention vs. May 6, 2005, for the compound and method of treating depression claim and July 15, 2006, for the method of enhancing cognition claim for the Acme chemist’s invention). The prior invention by the Germanchemist must first be considered for its prior art effects, if any, under 102 sections.Under §102(a), we see that the “known and use” provision applies only to knowledge and use in this country. From the facts given, the German chemist conceived and reduced to practice his invention entirely in Germany so it appears that §102(a) will not apply to his inventive acts.

The only other 102 section that might apply to the prior inventive acts of the German chemist is §102(g), but it will not. Unlike in part (4), we do not have aninterference situation. In the previous hypothetical, the German inventor was pursuing a patent in the United States and found himself in a contest to prove who invented the subject matter first. We learned that the German inventor abandoned his patent application in the United States and thus could not be involved in an interference. Asa result of this analysis, the date of the act of the invention itself will not be relevant because none of the 102 sections apply to our fact scenario.

Beyond the act of invention itself, there were additional acts/information that took place regarding the German invention, which must be considered for prior art purposes as well. First, he filed a patent application in the German patent office on March 7, 2005, which issued on April 1, 2007. Although this entire portion of the record relates to the German application only, a quick review of the 102 sections indicates that a foreign patent can be prior art under certain circumstances. Let’sreview those in view of the relevant facts. First, section §102(a) provides that priorart includes inventions patented in a foreign country before the invention date by the applicant. For the purpose of §102(a), the term patented refers to the date that rights of exclusivity are awarded to the applicant, generally when the patent is granted. In this case, the invention was patented in Germany on April 1, 2007. The Acme patent application describes three inventions, the first two with an invention date of May 6,2005, and the third with an invention date of July 15, 2006. So the subject matter of all three claims was invented before the patenting by the German inventor.

Section §102(d) applies to the foreign filing and issuance of a patent application by the inventor himself or his assignees. This means that in the instant hypothetical,the filing and issuance of the German patent is not an issue because the foreign application and issued patent were to a different party.
So the German act of invention is not a problem, the German patent is not a problem,but what about that PCT patent application filed on March 1, 2006, which published in the English language on September 15, 2006? A published patent application is a prior art publication under §102(a), good for all that it discloses(claimed and unclaimed subject matter) as of the date it publishes. However, since it is §102(a) prior art, it can be antedated by a showing of prior invention. The Acmeinventor can establish prior invention for all three claims (May 6, 2005 and July15, 2006 invention dates), so the reference can be removed as §102(a) prior art by an appropriately filed affidavit to the USPTO. Since the patent application was not published more than 1 year before the Acme chemist’s patent filing, §102(b) does not apply.

Remember though that patent applications can also be cited as §102(e) prior art;this is where things really start to get interesting. Let’s recall that section §102(e)allows a patent application to be cited as prior art as of the date the application is filed, not just the date the application is published. Under our present facts, we know the first application in the chain was filed as a German patent application on March 7, 2005, well before our inventor’s date of invention. The PCT application was filed on March 1, 2006, and it properly claimed priority to the earlier German application. Section 102(e) provides in part that an “international patent application filed . . . shall have the effects for the purpose of this subsection of an application filed in the United States . . . if the international application designated the United States and was published . . . in the English language.” We know from the given facts that the application was an international application that designated the United States and it was published in the English language. This means that the patent application itself was §102(e) prior art as of the date it was filed, March 1, 2006. Recall that §102(e)prior art can be antedated, just like §102(a) prior art. Since the Acme chemist’s first two claims have an invention data of May 6, 2005, the PCT application with a filing date of March 1, 2006 can be antedated for these claims. However, the claim to cognition enhancement has an invention date of July 15, 2006. As a result, the international patent application to the German chemist is prior art under §102(e) forclaim 3 and cannot be antedated.

What about the earlier patent application filed in Germany on which the international patent application properly claimed priority to? If this earlier foreign patent application was effective as a §102(e) prior art reference, the first two claims of the Acme invention would also be rendered not patentable since the German national patent application was filed on March 7, 2005, almost 2 months before the invention date assigned to the first two claims of the Acme chemist’s patent application. This is not the case because the prior foreign application is not given any prior art effect under§102(e). The earliest prior art date can only be afforded to an international patent application designating the United States or to an earlier filed U.S. patent application from which priority is properly claimed. If the facts of our scenario had been changed slightly so that the initial patent application was a provisional patent application filedin the U.S. office, then it could have served as prior art under §102(e) as of the date it was filed. Finally, an important point to note is that the patent application need never issue as a patent in order for it to be used as §102(e) prior art. In this situation, the Acme chemist will not obtain a cognition use patent in the United States because of the §102(e) rejection, and the German chemist will not obtain a cognition use patent because the application was abandoned. Further, after March 1, 2007, no one else may obtain a cognition use patent for that compound because the PCT application will then pose an absolute statutory §102(b) bar, since it will have been 1 year since it was effectively published (i.e. filed).

Unfortunately, scenario (6) is very common. The inventor publishes the invention before filing the patent application. In general, §102(a) or §102(b) will be cited asa basis for rejection, depending on the authorship of the prior publication and how much time elapsed between the publication and the patent application filing. By the present facts, our erstwhile inventor’s patent application was filed more than 1 yea rafter the abstract was published. As a result, the published abstract is prior art under§102(b) and is good for all that it discloses. Our Acme chemist cannot antedate 102(b)prior art. Notably, the published abstract may not affect the claim to the use of the compound for cognition enhancement since the abstract did not disclose, teach or even suggest such a use.

Finally, part (7) describes another common situation in which an inventor in the same company has filed a patent application describing and claiming an obvious variant of a later claimed compound from the same organization. The method of treatment in the earlier filed application should not affect the later claimed methods. Under the limited facts presented, it appears that the prior filed patent application is potentially prior art under §102(e) only. By the time the earlier April 1, 2006, application describing and claiming the obvious variant of his compound publishes, his application will have already been filed (on September 29, 2006) so the April 1, 2006, application will not be prior art under §102(a) or §102(b). The section that would be cited is§102(e), which relates to prior filed patent applications. Since this piece of prior art is actable obviousness but not novelty—that is, it would be a §102(e)/§103 rejection—the Acme chemist has an escape key. Section 103(c) provides that obviousness rejections citing patent applications under §102(e) (or f or g) can be removed when the patent application in question is subject to an assignment to the same entity as the patent application being cited as prior art. So no worries, right? Well, not exactly. As it was explained in the hypothetical, the earlier April 1, 2006, patent application not only describes but also claims the compound that makes the later filed compound obvious.

This situation should result in an obviousness-type double-patenting rejection whereby if the earlier compound is allowed to issue as a claimed compound, our Acmechemist’s claim to the obvious variant will have to include a terminal disclaimer pegged to the date of the earlier filed patent application. So what this means is that while the patent application filed on September 29, 2006, would normally provide coverage until September 29, 2026, in this case it may carry a terminal disclaimer and only run until April 1, 2026, the date of the earlier filed application.
We hope these scenarios have demonstrated some of the principals regarding what material can constitute prior art. Unfortunately, it is not always sufficient to compare the publication dates of prior art to the filing date of your own patent application. Ata minimum, however, you can now at least recognize some of the more salient issues and know when a more detailed analysis might be required.


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