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Peter J. Shurn I//**

IS THE INVENTION OF ANOTHER

AVAILABLE AS PRIOR ART? IN RE BASS TO IN RE CLEME.VS

AND BEYOND*

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1. INTRODUCTION In its 1973 decision, In re Bass,'the United States Court of Customs and Patent Appeals (hereinafter the CCPA) first considered combining sections 102(g) and 103 of Title 35, U.S. Code, in the context of an ex parte rejection entirely divorced from the award of priority in an interference. Six years later, the court avoided further consideration of this issue in In re Bulloch. But in 1980, the issue was considered anew in In re Clemens and a unanimous CCPA refused to extend the Bass holding beyond the facts of that case.

The trilogy of Bass opinions were critically reviewed in the literature and the potential ramifications of the Bass holding hotly debated. The Bulloch opinion received scant mention, and thus far, the Clemens opinion has received little, if any, attention. © 1981. Peter J. Shurn III. *A thesis submitted to the faculty of the National Law: Center of George Washington L'niversity in partial satisfaction of the requirements for the degree of Master of Lau's, Patent and Trade Regulation Law.

The American Patent Law Association presented its 1981 Robert C. Watson Award to the author for the best article on a subject of primary importance to the patent system written or published between November 1, 1980 and September 1, 1981. ** Associate, Arnold. White & Durkee, Houston. Texas. B.S.E.E., The Polytechnic Institute of Brooklyn, 1974; J.D., The New England School of Law, 1977: LL.M.. Patent and Trade Regulation Law. George Washington L'niversity, 1981.

| 47: F.2d 1276, 177 U.S.P.Q. 178 (C.C.P.A. 1973).
2 60+ F.2d 1362, 203 U.S.P.Q. 171 (C.C.P.A. 1979).
3 62. F.2d 1029, 206 U.S.P.Q. 289 (C.C.P.A. 1980).

4 See. 4.8.. Patent Law Perspectives. 1973 Developments, Dev. A. 3(7-1 et seq.; Rosenstock, Prior An Under 35 C.S.C. Section 103 Includes Prior Invenrion - in re Burss and la re Hellsund, 56 J. Pat. Off. Soc'y 263 1 1974): Pitlick, A Proposed Conpromise

to the: Prior Ari" Controversy Surrounding In re Hellsund and In re Bass. 56 J. Pal. Off. Soc'y 699 i 1974): Klitzman, 35 C.S.C. 10218) As Establishing Prior Ari, 58 J. Pat. Off. Socy 505 1 1976): Jorda, Section 10318) Prior Invention As Secrion 103 Prior Ari: Impac: on Corporate Research, 58 J. Par. Off. Soc'y??3(1946): F. Robbins, The Defense of Prior Invention- Patent Infringement Litigation (Prac. L. Inst. 1977): Janicke, Hhni Prior Art is known" to the Clieni? ---- Suggested Investigative approach. 1979 Patent Law Annual 67 (Malthew Bender 1979): Janicke, What is "Prior Ari" Under Section 103? The Need for Policy Thonghi. Nonobviousness, The Ultimate Condition of Patentability 3:1011). Witherspoon ed. Bureau Nat'l Aff. 1980); Witherspoon, Current Problems and Considerations Re Secrion 103 " Prior Ari" by Reason of 33 U.S.C. 102 le). . and 1g). (1980) Current Developments in Patent Law 95 (Prac. L. Inst. 1980).

The law as clarified in the Bass and Clemens opinions has significant impact upon invention in the corporate environment. That impact, however, arises not from any BassClemens rule per se, but rather from concepts of inventive entity and joint and sole invention under United States

patent law,5

In clarifying the law, the Bass and Clemens opinions suggest lines of inquiry for determining whether a particular invention of another is available as prior art within the meaning of that term in section 103 by virtue of section 102(g). These lines of inquiry will be developed and explored after examination of the relevant case law and statutory provisions.

II. BacKGROUND

Any standard for determining whether a patent applicant's contribution to the art is sufficient to justify issuance of a patent must be based upon the patent laws. Consequently, any analysis of such a standard must start with an analysis of the patent laws and of the cases construing and applying their terms. A. Relevant Statutory Provisions

The relevant statutory provisions include section 102(g)6 and section 1037 of the 1952 Patent Act. 1. Title 35, U.S. Code, Section 10218)

Section 102(g) prevents an applicant from obtaining a patent if before the applicant made his invention, that invention was made in this country by another and that other had not abandoned, suppressed, or concealed the invention. The condition subsequent on abandonment, suppression, and concealment is a codification of the Mason v. Hepburns doctrine' that

s See F. Robbins, The Defense of Prior Invention- Patent Infringement Litigalion 2-8 (Prac. L. Inst. 19771 and D. Chisum. 2 Patents $5.03(3) (Matthew Bender 1980).

35 U.S.C. $ 10218). : 35 U.S.C. $103.

13 App. D.C. 86 (D.C. Cir. 1898). 9 See, 2.8.. Young v. Dworkin. 489 F.2d 1277, 1280, 180 U.S.P.Q. 388, 391 C.P.A. 1973).

a subsequent inventor ... who has diligently pursued his labors to the procurement of a patent in good faith and without any knowledge of the preceding discoveries of another, shall, as against that other, who has deliberately concealed the knowledge of his invention from the public, be regarded as the real inventor and as such entitled to his reward....

The true ground of the doctrine, we apprehend, lies in the policy and spirit of the patent laws and in the nature of the equity that arises in favor of him who gives the public the benefit of the knowledge of his invention, who expends his time, labor, and money in discovering, perfecting, and patenting, in perfect good faith, that which he and all others have been led to believe has never been discovered, by reason of the indifference, supineness, or wilful act of one who may, in fact, have discovered it long before. 10

Section 102(g) provides:
A person shall be entitled to a patent unless-

(g) before the applicant's invention thereof the invention was made in this country by anether who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other."

The House Report on section 102(g) states: “Subsec tion (g) relates to the question of priority of invention between rival inventors."12 The Revision Notes which accompanied the Report indicate that:

Paragraph (g) is derived from title 35, U.S.C., 1946 ed., 869 (R.S. 4920, ...), the second defense recited in this section. This paragraph retains the present rules of law governing the determination of priority of invention.13

In pertinent part, R.S. 4920 read:

10 13 App. D.C. at 95-96.
11 35 U.S.C. $102(g) (emphasis added).

12 H.R. Rep. No. 1923, 82d Cong., 2d Sess., at 7 (hereinafter cited as House Report), (1952) U.S. Code Cong. & Ad. News 2394, 2399. The Senate Repor, S. Rep. No. 1979, 82d Cong., 2d Sess., id., repeats in substance the House Repon.

13 House Repor, supra note 12, at 17-18, (1952) U.S. Code Cong. & Ad. News at 2410 (emphasis added).

In any action for infringement the defendant may plead the general issue, and, having given notice in writing to the plaintiff or his attorney thirty days before, may prove on trial any one or more of the following special matters:

Second. That (the patentee) had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or,

And in notices as to proof of previous invention, knowledge, or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when granted, and the names and residences of the persons alleged to have invented or to have had the prior knowledge of the thing patented, and where and by whom it had been used; ....

P.J. Federico, one of the draftsmen of the 1952 Patent Act, commented that:

Paragraph (8) relates to prior inventorship by another in this country as preventing the grant of a patent. It is based in part on the second defense in old R.S. 4920 ... and retains the rules of law governing the determination of priority of invention developed by decisions.14

Characterized from its creation as relating to the question of priority of invention between rival inventors, section 102(g) was not relied on in the context of an ex parte rejection entirely divorced from the award of priority in an interference until Bass. 2. Title 35, U.S. Code, Section 103

Section 103 provides:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said

4 Federico. Commentary on the New Parent Act, 35 U.S.C.A. p. 1, at 19 ::-).

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