by permitting the real party in interest, the corporation, to patent the inventions discovered and perfected by its employees, and by measuring such corporate inventions against the standard of what would have been obvious to one of ordinary skill in the art outside the corporation at the time the invention was made within the corporation. All that is needed to expand the patent system to embrace corporate patent applications is a one sentence statutory amendment. Applying the two-prong test in such an expanded system, a prior invention made outside the corporation and unknown to the art, but known to an employee of the corporation, would be available as prior art against the corporate invention claimed in the corporation's patent application. But, a prior invention made inside the corporation and unknown to the art would not be available. The task of determining whether the invention of another is available as prior art can be both complex and involved in either the present patent system or in an expanded patent system. It is by no means an insurmountable task, however, when approached in the manner developed herein. SELECTED BIBLIOGRAPHY Bernstein, Duty of Candor and Good Faith-Does Rule 56 Com- Janicke, What Prior Art Is "Known" to the Client? —A Suggested Jorda, Section 102(g) Prior Invention as Section 103 Prior Art: Impact on Corporate Research, 58 J. Pat. Off. Soc'y 523 (1976). Klitzman, 35 U.S.C. 102(g) As Establishing Prior Art, 58 J. Pat. Off. Soc'y 505 (1976). La Fuze, Avoiding Inequitable Conduct in Selecting and Citing Prior Art in Patent Solicitation, 1977 Patent Law Annual 37 (Matthew Bender 1977). R. Milgrim, Trade Secrets (Matthew Bender 1979). Patent Law Perspectives Pitlick, A Proposed Compromise to the "Prior Art" Controversy Surrounding In re Hellsund and In re Bass, 56 J. Pat. Off. Soc'y 699 (1974). Rich, Congressional Intent-Or, Who Wrote the Patent Act of 1952, Nonobviousness-The Ultimate Condition of Patentability 1:1. Rich, Laying the Ghost of the "Invention" Requirement, Nonobviousness-The Ultimate Condition of Patentability 1:501. Rich, Why and How Section 103 Came To Be, NonobviousnessThe Ultimate Condition of Patentability 1:201. Rivise and Caesar, Interference Law and Practice (Michie 1940). F. Robbins, The Defense of Prior Invention-Patent Infringement Litigation (Prac. L. Inst. 1977). Rosenstock, Prior Art Under 35 U.S.C. Section 103 Includes Prior Invention-In re Bass and In re Hellsund, 56 J. Pat. Off. Soc'y 263 (1974). Skillman, 1977 Rules on Duty of Disclosure, 1979 Patent Law Annual 29 (Matthew Bender 1979) Witherspoon, Current Problems and Considerations Re Section 103 "Prior Art" by Reason of 35 U.S.C. 102(e), (f), and (g), [1980] Current Developments in Patent Law 95 (Prac. L. Inst. 1980). EDITOR'S NOTE: And see Chisum, Prior Invention and Patentability, 63 J. Pat. Off. Soc'y 397 (1981). Edward C. Walterscheld" THE EVER EVOLVING MEANING OF PRIOR ART (PART I) As the Court of Customs and Patent Appeals (C.C.P.A.) has noted, prior art "is a very important term of art in patent law." It is not surprising therefore that an immense amount has been written by both the judiciary and the various commentators-concerning this amorphoux concept. Although the very scope and complexity of the subject malter covered by the seemingly innocuous term "prior art" would appear to preclude any simple definition of what is meant thereby, there nonetheless is no dearth of trying. Thus, us but one example, the Seventh Circuit offers the following: The prior art includes any relevant knowledge, arts, description, and patents which pertain to, but pradite, the invention in question.1 The C.C.P.A., while acknowledging that the "exact meaning is a somewhat complex question of law," weighs in with: Basically, the concept of prior art is that which is publicly known, or at least known to someone who has takon steps which do mako it known to the public,...or known to the inventor against whose application it is being applied... [Citations omitted.] Unfortunately, definitions of this kind are not only simplistic but also are subject to a variety of exceptions.* *Deputy Assistant Director. University of California, Los Alamos National Taboratory, Los Alamos, New Mexico 87545 **The Los Alamos National Laboratory requests that the publisher identify this article we work performed under the auspices of the U.S. Department of Energy, 1. In re Borgy, 594 F.2d 953, 201 U.S.P.Q. 352, 3465 (1979), 2 Mooney v. Brunswick Corn.. 663 F.3d 724. 212 U.S.P.Q. 401, 464 (1961). 3 Bergy, supra, al footnote 7. This definition is dictum fur there was no navon other than apparent pique with langunge veed by the Supreme Court for the C.C.P.A. to volunteer it. 4 This will be shown in some detail later in theve articles. Suffice to say here that the mere fact that someone has taken steps which do in fact make information publicly known does not automatically muko it prior urt in the context of the patent luw. Moreover, such a definition literally suggests that the inventer's own invention Is always prior art to him since clearly it is known to him. While there are certain circumstances in which this can be the case, it is certainly not the usual state of affairs. In addition, contrary to the Seventh Circus definition, in some instances **prior art" can literally post-date rather than pre-date the invention in question. For reasons which will become clearer as this series of articles progresses, the complex nature of prior art can best be interpreted and understood in terms of the multitudinous case law involving it. Having said that, it is still appropriate to commence within the present statutory framework for the patent law which is the Patent Act of 1952 as subsequently amended. Title 35 of the United States Code is the codification of this Act. The only reference to prior art in the entire Act appears at 35 U.S.C. 103. According to the Senate Report accompanying the Act: [Section 103] refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in Section 102." [Emphasis supplied.] The chief draftsman of the Act made the same point: The antecedent of the words, "the prior art"... lies in the phrase "disclosed or described as set forth in Section 102" and hence these words refer to the material specified in Section 102 as the basis for comparison.' Other than this, the legislative history is silent as to any meaning to be ascribed to prior art. Initially, there was very little comment, judicial or otherwise, on this point. This is somewhat remarkable in that there are several subsections of 35 U.S.C. 102 which a perusal suggests should have no relationship to prior art as that term is most commonly thought of. For example, it is difficult to perceive how Section 102(c) concerning abandonment or Section 102(f) Recently, a district judys in (3hko recognized these fiets when he stated: "Prior art is a difficult concept to define. For instance, a literal definition of it is impossible." (Emphasis supplied.) General Motors Corp. v. Toyota Motor Co., Ltd., 467 F. Bupp. 1142, 203 U.S.P.Q. 158, 174 (8.D. Ohio 1979), 5 103. Condtiions for patentability; non-obvious subject maller A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 10% of the title, if the differences between the subject matter sought to be patented and the prior art are such that the subject muller as a whole would have been obvious at the time the invention was made in a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not he negatived by the manner in which the invention wan made. 6 Senate Report No. 1979, Råd Cong., 2d Sess., U.S. Code Cong, & Admin. News at 2399. 7 P. J. Federico, "Commentary on the New Patent Act," 35 U.S.C.A. p. | xl 8 See text accompanying note 28, supra. dealing with derivation or improper statement of invention pertain to prior art. Indeed, that is straightforward, or so at least Judge Rich of the C.C.P.A. seemed to think when he stated in 1973 that "[o]f course, [Section 102] (c), (d) and (f) have no relation to $103 and no relevancy to what is 'prior art' under §103.” It was his position that these three subsections deal only with originality of invention or loss of right having nothing to do with prior art." In a concurring opinion, Judge Baldwin noted that: The statute does not contain a definition of the term "prior art.' Nor does section 103 require that everything referred to in section 102 must be considered as "prior art" as that term is used therein." Thus, insofar as Judge Baldwin was concerned, "[n]o one would contend that section 102(c) has anything to do with prior art."'! Having said that, he was careful to point out that a literal reading of the language of Section 103 might easily load to the conclusion that "prior art" was intended to include only that material in Section 102 in which something is "disclosed or described."" He suggested that, based on the legislative history of the predecessor language to that which resulted in the Patent Act of 1952, the Congressional intent was not so narrow." Although Judge Rich and Judge Baldwin had a strong disagreement as to whether Section 102(g) was a prior art section of the statute," they were in full accord in stating their belief that no one would contend that Section 102(c) has anything to do with prior art. No one but the Patent and Trademark Office, that is. Dismissing the views of the C.C.P.A. in this regard as merely noncontrolling dicta, the board of appeals has recently espoused the position that 9 In re Buss, 474 F.2d 1276, 177 U.S.P.Q. 178, 189 (1973). 10 Id. 11 Russ, supra, 177 U.S.P.Q. at 193. 12 177 U.S.P.Q. at 193, n. 3. 13 The phruve "disclosed or described" is the exact terminology used in Section 103. See note 5, supra. 14 177 U.S.P.Q. at 193. The legislative history he relies on is set forth at nute 4 of the published opinion. 15 See their respective opinions in Buss, supra. 16 Ex parte Andresen, 212 U.S.P.Q. 100 (1981). |