2152.02 Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a Printed Publication, or in Public Use, on Sale, or Otherwise Available to the Public)
This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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Prior art documents and activities which may preclude patentability are set forth in AIA 35 U.S.C. 102(a)(1).
- Such documents and activities include prior patenting of the claimed invention, descriptions of the claimed invention in a printed publication, public use of the claimed invention, placing the claimed invention on sale, and otherwise making the claimed invention available to the public.
2152.02(a) Patented
This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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AIA 35 U.S.C. 102(a)(1) indicates that a prior patent of a claimed invention will preclude the grant of a subsequent patent on the claimed invention.
- This means that if a claimed invention was patented in this or a foreign country before the effective filing date of the claimed invention, AIA 35 U.S.C. 102(a)(1) precludes the grant of a patent on the claimed invention.
- The effective date of the patent for purposes of determining whether the patent qualifies as prior art under AIA 35 U.S.C. 102(a)(1) is the grant date of the patent.
- There is an exception to this rule if the patent is secret as of the date the rights are awarded.
In such situations, the patent is available as prior art as of the date the patent was made available to the public by being laid open for public inspection or disseminated in printed form.
The phrase “patented” in AIA 35 U.S.C. 102(a)(1) has the same meaning as “patented” in pre-AIA 35 U.S.C. 102(a) and (b).
Although an invention may be described in a patent and not claimed therein, the grant date would also be the applicable prior art date for purposes of relying on the subject matter disclosed therein as “described in a printed publication,” provided that the patent was made available to the public on its grant date.
- Note that a U.S. patent that issues after the effective filing date of a claimed invention and is not available as prior art against that invention under AIA 35 U.S.C. 102(a)(1) could be available as prior art under AIA 35 U.S.C. 102(a)(2).
2152.02(b) Described in a Printed Publication
This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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If a claimed invention is described in a patent, published patent application, or printed publication, such a document may be available as prior art under AIA 35 U.S.C. 102(a)(1).
- Both pre-AIA 35 U.S.C. 102(a) and (b) and AIA 35 U.S.C. 102(a)(1) use the term “described” with respect to an invention in a prior art printed publication.
- Likewise, AIA 35 U.S.C. 102(a)(2) uses that term with respect to U.S. patents, U.S. patent application publications, and WIPO published applications.
- Thus, the Office does not view the AIA as changing the extent to which a claimed invention must be described for a prior art document to anticipate the claimed invention under 35 U.S.C. 102.
While the conditions for patentability of AIA 35 U.S.C. 112(a) require a written description of the claimed invention that would have enabled a person skilled in the art to make as well as use the invention, the prior art provisions of AIA 35 U.S.C. 102(a)(1) and (a)(2) require only that the claimed invention is “described” in a prior art document (patent, published patent application, or printed publication.
The two basic requirements that must be met by a prior art document in order to describe a claimed invention such that it is anticipated under AIA 35 U.S.C. 102 are the same as those under pre-AIA 35 U.S.C. 102.
- First, “each and every element of the claimed invention” must be disclosed either explicitly or inherently, and the elements must be “arranged or combined in the same way as in the claim.”
- Second, a person of ordinary skill in the art must have been enabled to make the invention without undue experimentation.
Thus, in order for a prior art document to describe a claimed invention such that it is anticipated under AIA 35 U.S.C. 102(a)(1) or (a)(2), it must disclose all elements of the claimed invention arranged as they are in the claim, and also provide sufficient guidance to enable a person skilled in the art to make the claimed invention.
- There is, however, no requirement that a prior art document meet the “how to use” requirement of 35 U.S.C. 112(a) in order to qualify as prior art.
Holding that a claimed compound was anticipated even though the prior art reference did not disclose a use for the compound;
Pointing out that actually reducing the invention to practice is not necessary in order for a prior art reference to anticipate;
Stating that “proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation”.
Furthermore, compliance with the “how to make” requirement is judged from the viewpoint of a person of ordinary skill in the art, and thus does not require that the prior art document explicitly disclose information within the knowledge of such a person.
There is an additional important distinction between the written description that is necessary to support a claim under 35 U.S.C. 112(a) and the description sufficient to anticipate the subject matter of the claim under AIA 35 U.S.C. 102(a)(1) or (a)(2).
To provide support for a claim under 35 U.S.C. 112(a), it is necessary that the specification describe and enable the entire scope of the claimed invention.
- However, in order for a prior art document to describe a claimed invention under AIA 35 U.S.C. 102(a)(1) or (a)(2), the prior art document need only describe and enable one skilled in the art to make a single species or embodiment of the claimed invention.
An anticipatory description it is not required in order for a disclosure to qualify as prior art, unless the disclosure is being used as the basis for an anticipation rejection. In accordance with pre-AIA case law concerning obviousness, a disclosure may be cited for all that it would reasonably have made known to a person of ordinary skill in the art.
- Thus, the description requirement of AIA 35 U.S.C. 102(a)(1) and (a)(2) does not preclude an examiner from applying a disclosure in an obviousness rejection under AIA 35 U.S.C. 103 simply because the disclosure is not adequate to anticipate the claimed invention.
2152.02(c) In Public Use
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Under pre-AIA 35 U.S.C. 102(b), an invention that was “in public use” precluded the grant of a patent only if such public use occurred “in this country.”
Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where prior public use or public availability occurs.
- Furthermore, a public use would need to occur before the effective filing date of the claimed invention to constitute prior art under AIA 35 U.S.C. 102(a)(1).
The pre-AIA case law also indicates that a public use will bar patentability if the public use occurs before the critical date and the invention is ready for patenting.
- Under pre-AIA 35 U.S.C. 102(b), the critical date is the date that is one year prior to the date of application for patent in the United States.
Under pre-AIA 35 U.S.C. 102(b), the uses of an invention before the patent's critical date that constitute a “public use” fall into two categories: the use either:
- was accessible to the public; or
- was commercially exploited.
Whether a use is a pre-AIA 35 U.S.C. 102(b) public use also depends on who is making the use of the invention.
- In other words, a use by a third party who did not obtain the invention from the inventor named in the application or patent is an invalidating use under pre-AIA 35 U.S.C. 102(b) only if it falls into the first category: That the use was accessible to the public.
On the other hand, “an inventor's own prior commercial use, albeit kept secret, may constitute a public use or sale under [pre-AIA 35 U.S.C.] 102(b), barring him from obtaining a patent.”
Also, an inventor creates a public use bar under pre-AIA 35 U.S.C. 102(b) when the inventor shows the invention to, or allows it to be used by, another person who is “under no limitation, restriction, or obligation of confidentiality” to the inventor.
- Further, under pre-AIA 35 U.S.C. 102(a), “in order to invalidate a patent based on prior knowledge or use” by another in this country prior to the patent's priority date, “that knowledge or use must have been available to the public.”
Patent-defeating “use,” under pre-AIA 35 U.S.C. 102(a) includes only that “use which is accessible to the public.”
As discussed previously, public use under AIA 35 U.S.C. 102(a)(1) is limited to those uses that are available to the public.
- The public use provision of AIA 35 U.S.C. 102(a)(1) thus has the same substantive scope, with respect to uses by either the inventor or a third party, as public uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties or others under pre-AIA 35 U.S.C. 102(a).
- As also discussed previously, once an examiner becomes aware that a claimed invention has been the subject of a potentially public use, the examiner should require the applicant to provide information showing that the use did not make the claimed process accessible to the public.
Public use and on sale rejections under 35 U.S.C. 102(a)(1) may be based on uses and sales from anywhere in the world. The uses and on sale activities must be "public."
2152.02(d) On Sale
This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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The pre-AIA case law indicates that on sale activity will bar patentability if the claimed invention was:
- the subject of a commercial sale or offer for sale, not primarily for experimental purposes; and
- ready for patenting.
Contract law principles apply in order to determine whether a commercial sale or offer for sale occurred. In addition, the enablement inquiry is not applicable to the question of whether a claimed invention is “on sale” under pre-AIA 35 U.S.C. 102(b).
The phrase “on sale” in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as “on sale” in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.
- Under pre-AIA 35 U.S.C. 102(b), if an invention was “on sale,” patentability was precluded only if the invention was on sale “in this country.”
- Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur.
The pre-AIA 35 U.S.C. 102(b) “on sale” provision has been interpreted as including commercial activity even if the activity is secret.
AIA 35 U.S.C. 102(a)(1) uses the same “on sale” term as pre-AIA 35 U.S.C. 102(b).
- The “or otherwise available to the public” residual clause of AIA 35 U.S.C. 102(a)(1), however, indicates that AIA 35 U.S.C. 102(a)(1) does not cover secret sales or offers for sale.
- For example, an activity (such as a sale, offer for sale, or other commercial activity) is secret (non-public) if it is among individuals having an obligation of confidentiality to the inventor.
Secret commercial sales should not be applied as "on sale" prior art under 35 U.S.C. 102(a)(1).
- While there is no requirement that the use or sale activity be by another, it should be noted that certain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with the inventor), that precede the effective filing date by less than one year.
2152.02(e) Otherwise Available to the Public
This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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AIA 35 U.S.C. 102(a)(1) provides a “catch-all” provision, which defines a new additional category of potential prior art not provided for in pre-AIA 35 U.S.C. 102.
- Specifically, a claimed invention is not entitled to a patent if it was “otherwise available to the public” before its effective filing date.
- This “catch-all” provision permits decision makers to focus on whether the disclosure was “available to the public,” rather than on the means by which the claimed invention became available to the public or whether a disclosure constitutes a “printed publication” or falls within another category of prior art as defined in AIA 35 U.S.C. 102(a)(1).
The availability of the subject matter to the public may arise in situations such as a student thesis in a university library;
- a poster display or other information disseminated at a scientific meeting
- subject matter in a laid-open patent application or patent
- a document electronically posted on the Internet
- or a commercial transaction that does not constitute a sale under the Uniform Commercial Code
Even if a document or other disclosure is not a printed publication, or a transaction is not a sale, either may be prior art under the “otherwise available to the public” provision of AIA 35 U.S.C. 102(a)(1), provided that the claimed invention is made sufficiently available to the public.
2152.02(f) No Requirement of "By Others"
This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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A key difference between pre-AIA 35 U.S.C. 102(a) and AIA 35 U.S.C. 102(a)(1) is the requirement in pre-AIA 35 U.S.C. 102(a) that the prior art relied on was “by others.”
- Under AIA 35 U.S.C. 102(a)(1), there is no requirement that the prior art relied upon be by others.
- Thus, any prior art which falls under AIA 35 U.S.C. 102(a)(1) need not be by another to constitute potentially available prior art.
- However, disclosures of the subject matter made one year or less before the effective filing date of the claimed invention by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or a joint inventor may fall within an exception under AIA 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1).
