1504.02 Novelty
|
Section Frequency Chart
| Key |
|
|||||
| 1504.02 |
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
A person shall be entitled to a patent unless —
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(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 the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, 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 basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (“patent,” “Design Registration,” etc.), if the United States application is timely filed, a claim for priority will vest.
- If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing.
1504.03 Nonobviousness
|
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 (pre-AIA) for the law otherwise applicable.]
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
I. GATHERING THE FACTS
The basic factual inquiries guiding the evaluation of obviousness, as outlined by the Supreme Court in Graham v. John Deere Co. are applicable to the evaluation of design patentability:
- Determining the scope and content of the prior art;
- Ascertaining the differences between the claimed invention and the prior art;
- Resolving the level of ordinary skill in the art; and
- Evaluating any objective evidence of nonobviousness (i.e., so-called “secondary considerations”).
A. Scope of the Prior Art
The scope of the relevant prior art for purposes of evaluating obviousness under 35 U.S.C. 103(a) extends to all “analogous arts.”
- Therefore, where the differences between the claimed design and the prior art are limited to the application of ornamentation to the surface of an article, any prior art reference which discloses substantially the same surface ornamentation would be considered analogous art.
- Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered.
B. Differences Between the Prior Art and the Claimed Design
In determining patentability under 35 U.S.C. 103(a), it is the overall appearance of the design that must be considered.
- The mere fact that there are differences between a design and the prior art is not alone sufficient to justify patentability.
C. Level of Ordinary Skill in the Art
In order to be unpatentable, 35 U.S.C. 103(a) requires that an invention must have been obvious to a designer having “ordinary skill in the art” to which the subject matter sought to be patented pertains.
- The “level of ordinary skill in the art” from which obviousness of a design claim must be evaluated under 35 U.S.C. 103(a) has been held by the courts to be the perspective of the “designer of . . . articles of the types presented.”
D. Objective Evidence of Nonobviousness (Secondary Considerations)
Secondary considerations, such as commercial success and copying of the design by others, are relevant to the evaluation of obviousness of a design claim.
- Evidence of nonobviousness may be present at the time a prima facie case of obviousness is evaluated or it may be presented in rebuttal of a prior obviousness rejection.
II. PRIMA FACIE OBVIOUSNESS
Once the factual inquiries mandated under Graham v. John DeereCo. have been made, the examiner must determine whether they support a conclusion of prima facie obviousness.
- To establish prima facie obviousness, all the claim limitations must be taught or suggested by the prior art.
In determining prima facie obviousness, the proper standard is whether the design would have been obvious to a designer of ordinary skill with the claimed type of article.
- As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references.
The “something in existence” has been defined as “...a reference... the design characteristics of which are basically the same as the claimed design....” (the primary reference did “...not give the same visual impression...” as the design claimed but had a “...different overall appearance and aesthetic appeal...”.) Hence, it is clear that “design characteristics” means overall visual appearance.
A. Combining Prior Art References
A rejection under 35 U.S.C. 103(a) would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references.
- In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references.
The long-standing test for properly combining references has been “...whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.”
1. Analogous Art
When a modification to a primary reference involves a change in configuration, both the primary and secondary references must be from analogous arts.
Analogous art can be more broadly interpreted when applied to a claim that is directed to a design with a portion simulating a well known or naturally occurring object or person.
- The simulative nature of that portion of the design is prima facie evidence that art which simulates that portion would be within the level of ordinary skill.
2. Nonanalogous Art
When modifying the surface of a primary reference so as to provide it with an attractive appearance, it is immaterial whether the secondary reference is analogous art, since the modification does not involve a change in configuration or structure and would not have destroyed the characteristics (appearance and function) of the primary reference.
III. REBUTTAL OF THE PRIMAFACIE CASE
Once a prima facie case of obviousness has been established, the burden shifts to the applicant to rebut it, if possible, with objective evidence of nonobviousness.
- Examples of secondary considerations are commercial success, expert testimony and copying of the design by others. Any objective evidence of nonobviousness or rebuttal evidence submitted by applicant, including affidavits or declarations under 37 CFR 1.132, must be considered by examiners in determining patentability.
