Pre-AIA 35 U.S.C. 102:
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AIA 102
35 U.S.C. 102 has been updated on March 16, 2013 to convert the patent system from a first-to-invent to a first-inventor-to-file system. The main difference with this system is that the right of a patent for a given invention lies with the first person to file the patent application, regardless of the date of the invention.
There are 4 subsections of this version of 102 (called the AIA version). Keep in mind that this version of 102 replaces the older version for applications with a claim that has an effective date on or after March 16, 2013. Both AIA and pre-AIA can be tested on the Patent Bar exam so you should learn both at this point.
AIA 102(a)(1):
The AIA version of 102 (a)(1) essentially states that a person shall be entitled to a patent unless 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.
If the same subject matter in the application was known about somewhere else, then it's not patentable. That's because it's not new or what the PTO likes to refer to as novel.
Under the AIA version, the date of the invention is not the relevant factor. Instead it's the effective filing date of the application that matters. This version also leaves out the non-public sales activity.
AIA 102(a)(2):
The second part to paragraph (a) of AIA (subsection 2) states that the subject matter in the patent application may not have been involved in another issued patent or patent application filed prior to the effective filing date of the application that names another inventor.
So if Joe files a patent application on Jan 3, 2014 that claims the same invention disclosed in a patent application filed by Jane on October 1, 2012 then Joe's invention is not novel.
The second section of this statute is referred to as section (b). This section covers the exceptions to part (a). These are the exceptions to the novelty bars covered in (a).
The first exception, also known as (b)(1) refers to disclosures made 1 year or less before the effective filing date of the claimed invention. The exception is that if the disclosure was made 1 year or less before the effective filing date of the claimed invention, it will not be considered prior art (and thereby not a bar) if the disclosure was made (even if made publicly) by the inventor or joint inventor or by another who obtained it from the inventor or the joint inventor.
This keeps the inventor from having their own work count as prior art against them as long as the disclosure was made up to one year before the effective filing date of the claimed invention (even if made publicly).
The second part to this is known as (b)(2). The exception to this part refer to disclosures appearing in applications and patents.
The exceptions include when the subject matter disclosed was obtained from the inventor or a joint inventor (whether directly or indirectly or if publicly disclosed) or 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 assignment to the same person.
The provisions of the First Inventor to File System includes a 1-year grace period.
Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by the applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), or (2) the applicant or a deriver publicly disclosed the subject matter before the date of the prior art disclosure.
A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application is a statutory bar.
For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application.
AIA 102(c):
Section (c) states that applicants can rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102. It discusses what subject matter is considered as owned by the same person in light of joint research agreements. It essentially lists out the rules for common ownership concerning part (b)(2) of AIA 102.
This section states that subject matter is deemed to have been owned by the same person if the following conditions are met:
- the subject matter 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;
- the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
AIA 102(d):
Section (d) helps determine whether a patent or application for patent is prior art to a claimed invention under subsection (a).
As outlined in section (d), the patent or application will be considered to have been effectively filed as of the actual filing date of the patent or application for patent. In instances where the patent or application for patent is entitled to claim a right of priority or to claim the benefit of an earlier filing date it will be considered effectively filed as of the filing date of the earliest date of the application that describes the subject matter.
Pre-AIA 102
The old version (pre-AIA) is outlined here. Both AIA and pre-AIA versions of 102 can be tested on the Patent Bar exam. Please keep in mind that the exam pulls questions from a larger data bank so you can see a different breakdown of topics than someone else or even from different attempts (i.e. if you're having to take the exam multiple times).
For anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention, either explicitly or impliedly.
Pre-AIA 35 U.S.C. 102(a):
Prior art under U.S.C. 102(a) includes:
- A patent for the same subject matter obtained anywhere in the world.
- Public knowledge in the U.S. only.
- Publication anywhere in the world.
- Use by others in the U.S. only.
If there is a patent or publication for the same subject matter anywhere, public knowledge or use in the U.S., there will be a rejection under 35 U.S.C. 102(a).
The knowledge must be used in this country:
- Prior knowledge that is not present in the U.S., even if common in a foreign country, cannot be the basis of a rejection under 35 U.S.C. 102(a).
- Others refers to any entity different from the inventive entity, even if it only differs by one person.
Pre-AIA 35 U.S.C. 102(b):
If 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, there will be a rejection under 35 U.S.C. 102(b).
» What creates a statutory bar?
If the inventor discloses his or her own work more than 1 year before the filing of the patent application, the inventor is barred from obtaining a patent on that work.
The one year time bar is measured from the U.S. filing date.
» Experimental use:
Experimental use does not bar a patent, however it must be the primary purpose and any commercial exploitation that results from it must be incidental
Pre-AIA 35 U.S.C. 102(c):
Abandoned inventions will be rejected under 35 U.S.C. 102(c).
If an invention is abandoned, it cannot be patented later.
- For example, if 10 years pass by without the filing of a patent, the invention may be considered abandoned.
- A delay in making the first application is not sufficient to determine abandonment.
Pre-AIA 35 U.S.C. 102(d):
A person shall be entitled to a patent unless the invention was first patented, or was the subject of an invention certified by the applicant or his legal representatives or assigns more than 12 months before the filing of the application in the U.S.
For a foreign patent to qualify as a reference it:
- Need not be published, but the patent rights granted must be enforceable.
- Must be filed more than 12 months before the effective filing date of the U.S. application.
- Must be filed by the same applicant as the U.S. application, his or her legal representative or assigns.
- Must have actually issued as a patent or inventor’s certificate before the filing of an application in the U.S.
- Must involve the same invention.
There are four conditions that must be present in order to bar the granting of a patent under 35 U.S.C. 102(d):
- More than 12 months filing of foreign application.
- The foreign application must have been filed by the same applicant as in the U.S. or by his/her legal representatives or assigns.
- The foreign patent or inventor's certification must actually be granted before the U.S. filing date.
- The same invention must be involved.
Pre-AIA 35 U.S.C. 102(e):
A rejection under 35 U.S.C. 102(e) will be made where the “patent was filed by another with an earlier filing date”.
Publications of international applications filed before November 29, 2000 do not have a 35 U.S.C. 102(e) date at all.
In order for a reference to qualify as a reference under 35 U.S.C. 102(e), it must be a:
- U.S. patent
- U.S. application publication
- WIPO publication of an international application
An international application under 35 U.S.C. 102(e) must meet the following conditions:
- it must have an international filing date on or after November 29, 2000.
- it must designate the U.S.
- it must be published under PCT Article 21(2) in English.
A showing that the disclosure relied on is the applicant’s own work:
- Applicant need not prove diligence or reduction to practice to establish that he or she invented the subject matter, and;
- A sharing of conception by applicant before the filing date of reference.
Pre-AIA 35 U.S.C. 102(f):
If the subject matter was invented by someone else and not the inventor(s) listed on the application, there will be a rejection under 35 U.S.C. 102(f).
The inventors listed must be exactly those that invented the actual work.
- For example; if A, B and C invented something, and only A, B are listed on the application, the application is invalid since C should also be listed.
A person will receive a patent unless he, himself did not invent the subject matter sought to be patented.
The mere fact that a claim recites the use of various compositions, each of which can be assumed to be old, does not provide a proper basis for a 35 U.S.C. 102(f) rejection.
There is no requirement that an inventor be the one to reduce the invention to practice so long as reduction to practice was done on his or her behalf.
Pre-AIA 35 U.S.C. 102(g):
(g)(1) -states that a conflict with priority of the invention is discovered during the course of an interference:
- Someone else invented the same thing at almost the same time and did not abandon, suppress or conceal it.
(g)(2) -the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.
The U.S. has a first to invent rather than a first to file system:
- An interference is held to try to determine which party was the first to invent the invention.
- The first to conceive the invention and constructively reduce it to practice will be the sole party to obtain a patent.
Subject matter under 35 U.S.C. 102(g) is available only if the invention was made in this country:
- If the invention is reduced to practice in a foreign country, but knowledge of the invention was brought into this country and disclosed to others, the inventor can derive no benefit from the work done abroad.
- Such knowledge is merely evidence of the conception of the invention.
- The applicant can establish a date of invention in a NAFTA member country or WTO member country.
The difference between constructive and actual reduction to practice is that:
- Constructive reduction of practice is the date of the filing at the PTO.
- Actual reduction to practice is the date the invention was sufficiently tested to its intended proven purpose.
Diligence:
Reasonable diligence must only be shown between the date of the actual reduction of practice and the public disclosure to avoid the inference of abandonment.
