You are here:  Ed9 08.2017 Guidebook  » Appendix II: 35 U.S.C. 102

2133    Pre-AIA 35 U.S.C. 102(b)

 This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section discusses pre-AIA 35 U.S.C. 102(b). Publications, patents, public uses and sales must occur “more than one year prior to the date of application for patent in the United States” in order to bar a patent under pre-AIA 35 U.S.C. 102(b). The 1-year grace period is extended to the next working day if it would otherwise end on a holiday or weekend. In addition the 1-year time bar is measured from the U.S. filing date.

  Section Frequency Chart

 

I.   THE 1-YEAR GRACE PERIOD IS EXTENDED TO THE NEXT WORKING DAY IF IT WOULD OTHERWISE END ON A HOLIDAY OR WEEKEND

Publications, patents, public uses and sales must occur “more than one year prior to the date of application for patent in the United States” in order to bar a patent under pre-AIA 35 U.S.C. 102(b).

• However, applicant’s own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or Federal holiday and the application’s U.S. filing date is the next succeeding business day.

II.   THE 1-YEAR TIME BAR IS MEASURED FROM THE U.S. FILING DATE

If one discloses his or her own work more than 1 year before the filing of the patent application, that person is barred from obtaining a patent.

The 1-year time bar is measured from the U.S. filing date.

• Thus, applicant will be barred from obtaining a patent if the public came into possession of the invention on a date before the 1-year grace period ending with the U.S. filing date.
• It does not matter how the public came into possession of the invention. Public possession could occur by a public use, public sale, a publication, a patent or any combination of these.
• In addition, the prior art need not be identical to the claimed invention but will bar patentability if it is an obvious variant thereof.
  
  
  

 This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section covers rejections of continuation-in-part applications. When the applicant files a continuation-in-part whose claims are not supported by the parent application, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under pre-AIA 35 U.S.C. 102(b).

 This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section covers rejections based on publications and patents. An applicant's own work which was available to the public before the grace period may be used in a pre-AIA 35 U.S.C. 102(b) rejection. In addition, there is a brief discussion of how a pre-AIA 35 U.S.C. 102(b) rejection creates a statutory bar to patentability of the rejected claims.

I.   APPLICANT’S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE PERIOD MAY BE USED IN A Pre-AIA 35 U.S.C. 102(b) REJECTION

“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”

“Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large.”

II.   A Pre-AIA 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY OF THE REJECTED CLAIMS

A rejection under pre-AIA 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131, foreign priority dates, or evidence that applicant himself invented the subject matter.

• Outside the 1-year grace period, applicant is barred from obtaining a patent containing any anticipated or obvious claims.

 

» 2133.03 Rejections Based on “Public Use” or “On Sale”