We will write to you separately on the other sections of the proposed bill. Very truly yours, Polly Pauline Newman, Director Patent & Licensing Department Encl. Shurn, "Is the Invention of Another Available as Prior Art? In re Bass to In re Clemens and Beyond", 63 Journal of the Patent Office Society 516 (1981). Walterscheid, "The Ever Evolving Meaning of Prior Art", Part II, 64 J.P.O.S. 571 (1982) CC: Ad Hoc Group to Improve the Patent Laws d51B5 md 73 Peter J. Shurn III** IS THE INVENTION OF ANOTHER I. 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.2 But in 1980, the issue was considered anew in In re Clemens3 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 University in partial satisfaction of the requirements for the degree of Master of Laws, 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 University, 1981. 1 474 F.2d 1276, 177 U.S.P.Q. 178 (C.C.P.A. 1973). 2 604 F.2d 1362, 203 U.S.P.Q. 171 (C.C.P.A. 1979). 3 622 F.2d 1029, 206 U.S.P.Q. 289 (C.C.P.A. 1980). 4 See. e.g.. Patent Law Perspectives. 1973 Developments, Dev. A. 3[7]-1 et seq.; 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 11974): 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): Klitzman, 35 U.S.C. 102(g) As Establishing Prior Art, 58 J. Pat. Off. Socˇy 505 ( 1976): Jorda, Section 102g) Prior Invention As Section 103 Prior Art: Impact on Corporate Research, 58 J. Pat. Off. Soc'y 523 (1976): F. Robbins, The Defense of Prior Invention-Patent Infringement Litigation (Prac. L. Inst. 1977); Janicke, What Prior Art is "Known" to the Client?-A Suggested Investigative Approach, 1979 Patent Law Annual 67 (Matthew Bender 1979); Janicke, What is “Prior Art" Under Section 103? The Need for Policy Thought, Nonobviousness-The Ultimate Condition of Patentability 5:101 (J. Witherspoon ed. Bureau Nat'l Aff. 1980); 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). 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) and section 103' of the 1952 Patent Act. 1. Title 35, U.S. Code, Section 102(g) 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 5 See F. Robbins. The Defense of Prior Invention-Patent Infringement Litigation 2-8 (Prac. L. Inst. 1977) and D. Chisum, 2 Patents §5.03[3] (Matthew Bender 1980). 635 U.S.C. §102(g). 735 U.S.C. $103. 3 13 App. D.C. 86 (D.C. Cir. 1898). 9 See, e.g., Young v. Dworkin, 489 F.2d 1277, 1280, 180 U.S.P.Q. 388, 391 CC.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., §69 (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 Report, S. Rep. No. 1979, 82d Cong., 2d Sess., id., repeats in substance the House Report. 13 House Report, supra note 12, at 17-18, [1952] U.S. Code Cong. & Ad. News at 2410 (emphasis added). |