Effect on other provisions 1 102a allows publication

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Effect on other provisions (1) § 102(a) allows publication without reduction to practice – (g) requires conception plus reduction to practice (2) § 102(e) allows material disclosed but not claimed to be prior art – (g) is only what is claimed (3) § 102(a) – no territorial limit – (g) only in US 21
vi) Examples Timeline Outcome A files, then B files A wins, A reduced to practice before B B reduces to practice A files, then B files B wins, reduction to practice before A’s constructive reduction to practice A reduces to practice B reduces to practice A files, then B files A wins because A reduced to practice before B B conceives and proceeds with diligence A reduces to practice A files, then B files B wins because although B was second to reduce to practice, B conceived first and worked diligently A conceives and proceeds with diligence B conceives and proceeds with diligence A reduces to practice A files, then B files A wins because conception and reduction are before B B reduces to practice A reduces to practice B abandons, suppresses, or conceals A files, then B files A wins because B abandoned, suppressed or concealed and didn’t resume before A’s inventive activity B conceives and proceeds with diligence A reduces to practice A files B publicly discloses the invention A’s patent issues A’s patent is invalid because B first conceived and proceeded with diligence before publicly disclosing vii) Cases (1) Mason v. Hepburn (a) Invents gun clip that he conceals in a drawer, later inventor invents/patents (b) Holding: Patent upheld because invention was abandoned, suppressed, or concealed Codified in §102(g)(2) (2) Dow Chemical Co. v. Astro Valcour, Inc. (FC 2001) (a) Making foam with isobutane as blowing agent (b) AVI licenses general method from Japanese – Invents and uses the process (c) Burden shifting (i) Burden on AVI to prove they were using it before filing of Dow (ii) Burden to Dow to raise material question of fact that AVI concealed (d) Rule – Anticipating inventor must recognize they invented something, not that it is patentable (3) Dunlop Holdings, Ltd. v. Ram Golf Corp. (a) Invented golf ball coating, Dunlop invents separately (b) Holding: Despite secrecy, invention was not suppressed (i) Use gives public benefit (ii) When the article itself is freely accessible to the public, it is fair to presume it will be reverse engineered “Informing public use” 22
(4) Kewanee Oil Co. v. Bicron Corp. (SC 1974) (a) Patent on method to grow scintillation crystals, employee defects and starts competing company Δ claims trade secrecy preempted by patent law (b) 3 prong argument (i) Inventions that are not patentable – removing TS will not push these into the public/patent system, TS promotes licensing/other sharing of info (ii) Inventions that might be patentable – these people will mostly seek patent and at the margin some patents will get denied TS makes no change (iii) Invention is patentable – TS is a much weaker protection than patent law in this situation, doesn’t protect against parallel discovery, etc. (5) Brown v. Barbacid (FC 2002) (a)

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