Parallels between anticipation (102) and obviousness (103) versus literal and equivalence infringement (271(a))

How close are the inventions? Issue is whether the claimed invention is unpatentable (before USPTO) or invalid (if asserted as basis for claimant’s rights in litigation) Issue is whether the defendant is infringing on a valid patent
Identical Prior art and applied-for invention are identical in all elements: 102 anticipation

Example:

  • X publicly sells ABC
  • Later, Y applies to patent ABC

Result: Prior art is identical, so X bars Y’s patent under 102.

Question: How will the USPTO learn about X’s sale of ABC?

 Defendant is making, using, selling, etc. something identical in all elements to claimed invention: 271(a) literal infringement

Example:

  • A obtains patent for DEF
  • Later, B makes and sells DEF

Result: B is making and selling the identical product, so B is literally infringing A’s patent under 271(a). 

Question: What if it later turns out that a third person, “Tommy,” publicly sold DEF before A filed for a patent?
Close but not identical Prior art and applied-for invention have minor differences that are obvious to PHOSITA in light of pertinent prior art: 103 obviousness

Example:

  • X publicly sells ABC
  • Later, Y applies to patent ABD

Result: Prior art is not identical, but X will bar Y’s patent under 103 if the change from ABC to ABD is obvious.

Question: How will the USPTO learn about X’s sale of ABC?

 Defendant is making, using, selling, etc. something that is equivalent to claimed invention: 271(a) infringement through doctrine of equivalents (DOE)

Example:

  • A obtains patent for DEF
  • Later, B makes and sells DEG

Result: B is not making and selling the identical product. However, if DEG is equivalent to DEF, then B is infringing A’s patent under 271(a) pursuant to the Doctrine of Equivalents.

Question: What if it later turns out that a third person, “Tommy,” publicly sold DEG before A filed for a patent?

 

Revised June 14, 2018