Ch6. Patent Law Deep Dive — Novelty, Non-Obviousness, and Prosecution Procedure

Patentability Requirements

Patent Formation Requirements:
Invention: A process, machine, manufacture, or composition
           of matter (35 U.S.C. § 101 statutory categories)

Substantive Requirements:
Novelty (§ 102): Not anticipated by prior art before the
                  effective filing date
Non-Obviousness (§ 103): Not obvious to a PHOSITA at the
                           time of filing
Utility: Useful, specific, substantial utility

Grace Period (AIA):
Inventor's own disclosure within 12 months before filing
does not constitute prior art against the inventor's own
application (§ 102(b)(1)(A))

First-Inventor-to-File (AIA, effective March 16, 2013):
When two applications claim the same invention, priority
goes to the first to file — NOT first to conceive.
Distinguished from the prior first-to-invent system.

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Patent Prosecution Procedure

Filing:
Submit specification, claims, drawings, abstract to USPTO
Sets the effective filing date — critical for prior art analysis

Publication:
Application published 18 months from earliest priority date
(unless non-publication request filed under 37 C.F.R. § 1.213)
Creates prior art as of the publication date

Examination:
Substantive examination is automatic for most applications
(RCE and continued prosecution available after final rejection)

Office Action:
Examiner issues rejection (§ 101/102/103/112) or objection
Shortened statutory period: 3 months (extendable to 6 months)

Applicant Response:
Amendments to claims, arguments, or both
After final rejection: RCE, appeal to PTAB, or continuation

Registration:
Notice of Allowance → issue fee payment → patent grant
Maintenance fees at 3.5, 7.5, and 11.5 years post-grant

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Patent Rights and Infringement

Patent Term:
Utility and plant patents: 20 years from earliest effective
filing date (subject to patent term adjustment/extension)
Design patents: 15 years from date of grant

Scope of Exclusionary Right:
Making, using, selling, offering for sale, importing the
patented invention (35 U.S.C. § 271(a))

License Types:
Exclusive License: All rights in territory/field; typically
                   confers standing to sue for infringement
Non-Exclusive License: Permission to practice; no exclusivity;
                        generally no standing to sue alone

Infringement:
Direct (§ 271(a)): Literal or doctrine of equivalents
Induced (§ 271(b)): Active inducement with knowledge of patent
Contributory (§ 271(c)): Sale of component with no substantial
                           non-infringing use

Invalidity:
Post-grant IPR, PGR, or ex parte reexamination available
Successful invalidity: patent void ab initio (as if never granted)

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Key Concept Flash Cards

Patentability = § 101 + § 102 + § 103 + § 112 ★★★★★ : Subject-matter eligibility, novelty, non-obviousness, enablement/written description. Memory anchor: Four sections, four requirements.

AIA Grace Period = 12 months ★★★★★ : Inventor’s own disclosure within 12 months before filing date is excepted from § 102 prior art. Memory anchor: Grace period = 1 year.

Patent Term = 20 years from filing date ★★★★☆ : Measured from earliest effective filing date, not grant date. Memory anchor: Patent = 20 years from filing.

First-Inventor-to-File (AIA) ★★★★★ : Priority goes to first to file, not first to invent. Applies to applications with an effective filing date on or after March 16, 2013. Memory anchor: AIA = race to the patent office.

PHOSITA ★★★★★ : Person Having Ordinary Skill In The Art — the objective standard for both obviousness and enablement. Memory anchor: The hypothetical reasonable technician.

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Practice Problems

Q. Why is the “person having ordinary skill in the art” (PHOSITA) the standard for non-obviousness analysis?

Patents are granted to promote progress — rewarding inventors for advancing technology beyond what was already within routine reach. If a PHOSITA could easily have arrived at the same invention by combining the existing prior art, granting a patent would simply reward routine engineering, not true innovation. The PHOSITA standard is objective: it accounts for the full knowledge base of a normally competent practitioner in the field at the time of filing. In practice, non-obviousness is the most frequently litigated and most contested ground in USPTO examination — the examiner must identify specific prior art combinations and explain a motivation to combine.

Q. What is the practical significance of patent invalidity operating ab initio?

If a patent is found invalid through IPR, PGR, or litigation, it is treated as though it never existed from the moment it was granted. This has several important practical consequences: (1) any licenses granted under the now-invalid patent remain valid contracts between the parties — the licensor’s obligation to repay royalties already collected is generally not created by the invalidity ruling alone, though unjust enrichment claims are possible; (2) prior infringement suits based on the patent are not automatically re-opened, but the legal landscape shifts dramatically; (3) from a competitor’s perspective, invalidity is a powerful offensive weapon — even a seemingly strong patent can be challenged if prior art exists that the examiner did not consider. This is why comprehensive prior art searches before litigation decisions are essential.