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.
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Section Frequency Chart
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A person shall be entitled to a patent unless -
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(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
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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.
2133.01 Rejections of Continuation-In-Part (CIP) Applications
This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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The effective filing date of a claimed invention is determined on a claim-by-claim basis.
2133.02 Rejections Based on Publications and Patents
This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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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.
2133.02(a) Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication or Patent
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This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA.
A rejection based on pre-AIA 35 U.S.C. 102(b) can be overcome by:
- (A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
- (B) Amending the claims to patentably distinguish over the prior art;
- (C) Submitting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78:
- (1)
- (a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet which contains a specific reference to a prior application in accordance with 37 CFR 1.78, or
- (b) for applications filed prior to September 16, 2012, by amending the specification of the application to contain a specific reference to a prior application or by filing a corrected application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, and
- (2) by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012) or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78;
or
- (1)
- (D) Submitting a benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78 or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 (see item (C) above).
- Because a provisional application could not have been filed more than one year prior to the filing of a nonprovisional application that claims benefit to the provisional application, once the benefit claim under 35 U.S.C. 119(e)) is perfected, the rejection must be reconsidered to determine whether the prior art still qualifies as prior art under pre-AIA 35 U.S.C. 102(b) or whether the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a).
- Note, however, effective December 18, 2013 the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e).
