Figure I5

A copy of the front page of U.S. Pat. No. 3,402,485, issued on May 13, 1966. The animal track footwear soles described in this patent allow a wearer to lay simulated animal tracks. This is one of many illustrations of how small a level of utility is required to meet that part of the requirement for patentability.

discovers a new aspect of quantum mechanics that opens the door to all kinds of exciting nanotechnology developments would not be able to patent it if it represents a law of nature.

Sometimes, this subject-matter requirement can be finessed. While it may not be possible to patent fullerenes themselves, an efficient method for producing fullerenes may legitimately be patented as a "process." This is not merely a semantic distinction. Purely natural processes may be horribly inefficient, producing fullerene structures rather randomly with all kinds of other molecules. The development and refinement of a process that is more selective in the types of molecules produced is a result of the ingenuity of human beings.

iii. Prior Art

In addition to the utility and subject-matter requirements, inventions must be new7 and cannot be obvious8 over what was previously known. These requirements represent by far the major focus in evaluating the validity of patents, both during examination in a patent office and during litigation. The body of previous knowledge against which novelty and obviousness are measured is referred to as the "prior art." Precisely what information is included in the prior art reflects a number of different policy determinations. While the following discussion emphasizes those policies that have been adopted in the United States, other countries do emphasize different concerns so that the scope of the prior art sometimes varies from country to country.

The different sources of prior art may be considered in three broad groupings: documentary references, U.S. patents, and everything else. The first group, documentary references, essentially includes everything that has been published in written form, irrespective of where the publication took place. It includes journal articles, newspaper articles, patents that have issued (or patent applications that have been published) in foreign countries, everything that has appeared on the World Wide Web, and many other sources of information. For a patent claim to be valid, it cannot have been disclosed in any of these sources nor be obvious over what has been disclosed in these sources. There are wide differences in how accessible these different documentary sources are—material published on a popular Web site will be much more widely known than information published in an obscure technical journal in a language understood by only a handful of people—but the patent laws treat them entirely equally.

In most countries, a patent cannot be obtained if the invention was disclosed in a documentary reference before the patent application was filed. The United States is unusual in that it affords a grace period between the publication of the documentary reference and the filing date of the application. This grace period is one year: as long as the material was published less than a year before the filing of the patent application, a documentary reference will not compromise the ability to obtain a patent in the United States. This provides inventors with the freedom to disseminate their ideas for at least a limited time without relinquishing their patent rights. A handful of other countries also provide a grace period, usually somewhere between six months and a year, but the vast majority of countries provide no grace period at all. In these countries, if no application has been filed, patent rights are forever lost the day after any kind of publication of the invention.

Special status is given to documentary references that are in the form of U.S. patents (or publications of U.S. patent applications). They accordingly form the second group of prior art. This special status is based on a fiction that the U.S. Patent Office should operate with perfect efficiency. The idea is that once a patent application is filed, the patent office should immediately be able to determine whether to grant the patent, and do so on the very day the application is filed. Any delays in actually doing so are ignored—U.S. patents and published U.S. patent applications are therefore treated as prior art as of their filing date.

The third group of prior art includes everything else: actual public uses of the invention, sales of the invention by someone, oral disclosures of the invention at a conference, and so forth—it includes essentially anything unwritten that resulted in the invention being known in a public way. In the United States, this third group is considered to be prior art only if the unwritten disclosure occurred within the territorial borders of the United States. This is a somewhat parochial position to take and reflects a policy judgment that permits the patenting of inventions that, although known somewhere in the world, are known only in the most parochial of fashions.

That is, if some invention was being used publicly in Europe but news of it had not yet reached the United States, it would remain patentable in the United States as long as it was not disclosed in a public documentary reference. This is true irrespective of how long or how common the invention was in Europe—if it was known there only through unwritten sources and was unknown in the United States, it remains patentable here. This would similarly be true if actual devices were being manufactured and sold routinely in Australia (or anywhere else in the world)—as long as knowledge of them is limited to unwritten sources and they remain unknown in the United States, they remain patentable.

Another policy judgment that the United States makes is that information in the second and third groups—that is, everything other than documentary references—is prior art only if the disclosure occurred before the date of the invention, irrespective of when the application describing and claiming the invention was filed with the patent office. This policy embraces the idea in the United States that a patent for an invention should be awarded to the first person who actually invents it, rather than to the person who wins a race to the patent office. When an inventor is confronted with potential prior art from the second and third groups, a mechanism therefore exists for him to prove that the time of his actual invention predates those disclosures.9

The determination of what is and what is not prior art is not always simple (Figure I.6). Some disclosures have aspects that fall into more than one of the three groups outlined above, and careful consideration may be needed to reconcile the different policy objectives. In addition, I have simplified certain complexities that exist in the law to avoid obscuring the fact that the specific rules directly embrace certain policy considerations that the United States finds important—that documentary references are more important than other types of information; that when there are competing claims to an invention, the first to make the invention is the one who should be awarded the patent; that unwritten knowledge should become relevant only when it penetrates the borders of the United States; and so on.

The calculus by which the United States reaches these policy conclusions is different from how many other countries evaluate similar issues. The result is that the same disclosure might be prior art in one country but not in another.

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