PATENT BAR REVIEW OUTLINE : Novelty and Loss of Right; §102

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Novelty and Loss of Right; §102

  1. §102(a): prior art must be by another; default date of current invention (DOI) is the effective f/d; may be overcome by Rule 1.131 or Rule 1.132 declaration depending on the situation.
    1. General elements: conception, reduction to practice(RTP), reasonable due diligence
      1. Actual RTP: testing is not required
      2. Constructive RTP: filing patent application; DOI = f/d
      3. Reasonable due diligence: until RTP, before prior art date
    2. Four §102(a) prior art events that anticipate a claim before the date of invention (not f/d)
      1. Public knowledge inside US: known to others
        1. Not deliberately concealed
        2. Classified material’s public knowledge date = printing date (but not yet made public!)
      2. Used by others inside US
        1. Not deliberately concealed
      3. Patented anywhere in the world: patent date = patent publication date
        1. Both claims and specification in earlier patent are prior art.
        2. In US: patent date = patent publication date = patent enforcement date
        3. In a jurisdiction where patent right is attached before patent is published: patent date = patent publication date
        4. In a jurisdiction where patent right is attached after patent is published: patent date = patent publication date
      4. Printed publication anywhere in the world: key is public open-access and dissemination
        1. Printed prior art must enable
        2. Library housed publication: must be catalogued/indexed by subject, or otherwise sufficiently accessible to the public.
        3. Magazine or journal disseminated by mail: received by at least one member of the public
        4. Internet posting: considered printed publication
        5. Classified material’s printed publication date = release date (made public, later than its public knowledge date)
        6. Oral presentation: considered printed if written copies distributed without restriction to an open audience
        7. Earlier publication when applicant is one of multiple authors: is prior art
    3. Overcoming §102(a) rejection
      1. Submit Rule 1.131 declaration antedating applicant’s invention
      2. Submit Rule 1.132 declaration showing that the prior art of another actually describes the current applicant’s invention.
  2. §102(e): secret prior art; may be either a published application (§102(e)(1)) or a US patent (§102(e)(2)); prior art must be by another (= prior inventive entity not completely identical to current entity); prior art date is a US date (not foreign priority date); prior art patent must be enabling; may be overcome by a Rule 1.131 or Rule 1.132 declaration.
    1. Published domestic application §102(e)(1)
      1. Prior art date is the earliest US f/d (provisional f/d, nonprovisional f/d, or domestic priority date) of an earlier US application.
      2. Foreign priority date is not a prior art date: Hilmer doctrine
        1. An applicant’s foreign priority date may be used as a “shield” to protect his own patent application.
        2. A reference inventor’s foreign priority date may not be used as a “sword” to defeat another inventor’s patent application.
    2. PCT application published by WIPO in English §102(e)(1)
      1. Prior art date is the PCT f/d if the PCT application also:
        1. Was filed on or after 2000-11-29 (AIPA)
        2. Designated the US
        3. Was published by WIPO in English (after PCT f/d)
      2. If the PCT application does not satisfy the above 3 conditions, then its prior art date is only its publication date, thus only serving as §102(a) and/or §102(b) prior art.
      3. This prior art date may be pushed even further if this PCT application
        1. Claims priority to an even earlier US application (provisional or nonprovisional), but not foreign application!
        2. Still satisfies the above 3 conditions
      4. This reference published PCT application does not need to enter US national stage.
    3. PCT application following US national stage entry, published by PTO in English §102(e)(1)
      1. Prior art date is the PCT f/d if the PCT application also:
        1. Was filed on or after 2000-11-29 (AIPA)
        2. Designated the US
        3. Was published by WIPO in English (after PCT f/d)
      2. If the PCT application does not satisfy the above 3 conditions, then its prior art date is only its publication date, thus only serving as §102(a) and/or §102(b) prior art.
    4. US patent issuing from a domestic application §102(e)(2)
      1. Prior art date is the earliest US f/d (but not foreign priority date) of an earlier US patent.
    5. US patent issuing from a PCT application following national stage entry §102(e)(2)
      1. PCT application filed on or after 2000-11-29 (post-AIPA)
        1. Prior art date is either the PCT f/d or an earlier effective US f/d, if the PCT application:
          1. Was filed on or after 2000-11-29 (AIPA)
          2. Designated the US
          3. Was published by WIPO in English (after PCT f/d)
        2. If the PCT application does not satisfy the above 3 conditions, then its prior art date is only its issue/publication date, thus only serving as §102(a) and/or §102(b) prior art.
      2. PCT application filed before 2000-11-29 (pre-AIPA)
        1. Prior art date is the US national stage entry date, thus the applicant must have done the following:
          1. Paid the requisite national fee
          2. Filed a copy of the PCT application and English translation (if necessary)
          3. Filed the requisite oath or declaration
        2. Not necessary: WIPO published the PCT application in English (reason: such publication is a product of AIPA)
  3. §102(g)(2): comparing two DOIs by different inventors inside US
    1. Prior art must be by another
    2. Prior art date is before the current applicant’s DOI
    3. Another’s invention was not abandoned, suppressed or concealed: even without public access
    4. Prior art must be inside US
    5. Prior art invention must have been reduced to practice, actually or constructively
  4. §102(b): statutory time bar; prior art date more than a year prior to current f/d
    1. General elements
      1. Compare prior art date with the critical date (one year before current US f/d)
      2. If one-year anniversary of prior art date falls on a weekend or federal holiday, then filing on the next PTO business day is timely.
      3. §102(b) time bar may be created by current applicant’s own prior art.
      4. Current invention claim must read on prior art (every element and limitation of current claim must be present in the prior art).
    2. Four prior art events that anticipate the critical date (one year before f/d) of current claim
      1. In public use inside US: even single, unobservable event qualifies
        1. Not intentionally concealed
        2. Public use in violation of confidentiality agreement is nonetheless public use.
        3. Experimental use in public (to demonstrate feasibility) is not public use.
          1. Public testing necessary
          2. Must be technical in nature
          3. Experiment kept confidential
          4. Profit only incidental to use
        4. Market testing is considered public use.
      2. On sale inside US: commercial sale or offer for sale; invention must be “ready for patenting” (= ARTP or enabling)
        1. Profit is irrelevant.
        2. Sale or offer for salt to or from US, even when the offer was rejected by or was not received by the offeree, even when the sale was never consummated.
        3. Assignment of patent rights is not an on sale event.
        4. Same as public use: experimental use is not on sale, but market testing is on sale.
        5. Published abstract that is non-enabling may establish on sale event.
      3. Patented anywhere in the world: same as §102(a)
      4. Printed publication anywhere in the world: same as §102(a)
    3. A §102(b) statutory time bar cannot be overcome by any means.
  5. §102(d): pertains to foreign prior art patent only; similar to §102(b) time bar; cannot be overcome by any means
    1. Foreign patent must be filed more than 12 months (6 months for designs) before the US f/d.
    2. Foreign patent must issue before the US f/d.
    3. Foreign must have been filed by the same inventor, his legal representative or assigns (such as company, employer, etc.)
    4. The same invention must be involved, but not necessarily claimed in the US application and foreign patent.
  6. §102(c): applicant has abandoned the invention; abandonment requires intent (expressed or implied) by the inventor
    1. Intent to abandon type one: unreasonably long delay in applying for US patent, coupled with other evidence of intent to abandon (such as being spurred on by another’s commercialization of the invention)
    2. Intent to abandon type two: obtaining a US patent disclosing but not claiming a distinct embodiment of the invention: presumed to dedicate to public; may be overcome by a later application within a year from publication or by recapture through broadening reissue within two years from issue.
    3. Mere abandonment of application is not abandonment of invention
      1. May revive application if unintentionally or unavoidably abandoned the application
      2. May reacquire application if expressly abandoned application, but loses original f/d
  7. §102(f): applicant derived the invention from another (did not conceive the invention)
    1. Geography is irrelevant to derivation
  8. Special forms of §102 prior art
    1. Abandoned applications: unpublished application; MPEP901.02, MPEP2127
      1. If an issued patent refers to an abandoned application, the contents of the abandoned application becomes §102(a), (b) prior art as of the patent’s issue date.
      2. If an issued patent incorporates by reference an abandoned application, the contents becomes prior art under §102(e)(2) prior art as of the patent’s filing date.
    2. Material cancelled from an application during prosecution: becomes §102(a), (b) prior art when the patent issues.
      1. Reason: prosecution history becomes public when the patent issues.
      2. Not §102(e)(2) prior art because it is not disclosed in the patent itself.
    3. Incipient §102(e) references: later filed application may be provisionally rejected over an earlier application under §102(e)
      1. If the two applications have a common inventor or assignee MPEP2136.01
      2. If different inventor or assignee, then PTO cannot break confidence and disclose.
    4. Statutory Invention Registration (SIR): treated as §102(e)(2) prior art as of f/d.
    5. Doctrine of forfeiture: from case law, similar to §102(b)
      1. Commercial, purposely hidden use of a process or machine more than a year before f/d, coupled with secret sale of offer to sale: precludes the applicant from obtaining patent.
      2. But the hidden use and sale does not preclude a later, third-party inventor from obtaining patent of the same invention.
  9. Noted points
    1. Anticipation, inherency, enablement
      1. Current invention claim must read on prior art: every element and limitation of current claim must be present, expressly or inherently (evidenced by a second reference), in the prior art.
      2. Anticipation requires enablement by PHOSITA, but such enablement may be evidenced by a second reference.
      3. The second reference only demonstrates, but does not supplement.
  10. DOI outside US: §104
    1. Prior to 1993-12-08: DOI outside US invalid unless
      1. Applicant domiciled in US but outside US serving US government business
      2. Filing PCT or foreign application
    2. On or after 1993-12-08 but before 1996-01-01: pursuant to NAFTA
      1. DOI in Canada and Mexico allowed
    3. On or after 1996-01-01: pursuant to WTO
      1. DOI in almost all civilized countries allowed