Patent Novelty 35 USC §102

Kristine H. JohnsonMacMillan, Sobanski & Todd, LLC

johnson@mstfirm.com

Novelty – 35 USC §102

§102 is generous:

A person shall be entitled

to a patent unless…

Invention Presumed Novel, 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.

35 U.S.C. § 102(a)-(g) in a nutshell

102(a)Before Invention, by Others

“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”

102(a)Before Invention, by Others

• Focus is on activities of third parties before the inventor’s invention

• Prior use or knowledge– Known or used in the U.S.– By a person other than the inventor– Before inventor’s invention

• Prior publication– Published anywhere in the world– By a person other than the inventor– Before inventor’s invention

In the U.S., It’s First to Invent

Invention Date Prior Publication

Application Filing Date

§ 102(a) Inventor can prove invention prior to publication or use by another

102(b) More than One Year before Invention

“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.”

Watch Out for the Absolute Bar!

Prior Sale

One Year Before Filing Application Filing Date

§ 102(b) Absolute bar if sold or published more than one year before filing

§ 102(a) Inventor can prove invention prior to publication or use by another

102(b) More than One Year before Invention• Focus on activities of inventor• Prior publication

– Published anywhere in the world– By any person, including the inventor– More than one year before effective filing date of

application• Public use or sale

– In use or on sale in the U.S.– By any person, including the inventor– More than one year before effective filing date of

application

§ 102(c) Abandonment

“He has abandoned the invention.”

102(c) Abandonment

• What is abandonment?– Abandonment of the right to obtain a patent– Dedication of the invention to the public– Does not mean forfeiting the right to practice the

invention

• How does issue of abandonment arise?– As a rejection to claims during prosecution– As an affirmative defense in a patent infringement

suit or in a– declaratory judgment action

102(c) Abandonment

• Requirement to prove abandonment?

– Must prove intent on the part of the applicant to abandon his/her right to a patent claiming the invention

– Intent can be expressed or implied

102(d)Patenting activities outside US

“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”

102(d)Patenting activities outside US

• What is the purpose?– To encourage the prompt filing of an application

for patent in the United States

• Three Conditions for § 102(d) to apply– Applicant must file an application for patent in

another country– Applicant must file an application for patent in the

United States more than 12 months later– The foreign patent must issue before the filing of

the United States application

102(d)Patenting activities outside US

• Four conditions from MPEP– Filing date of foreign application more than 12

months before effective filing date of US application

– Foreign application filed by the same applicant as in the US or by his legal representative or assigns

– Foreign patent or inventor’s certificate must be granted before the US filing date (need not be published); and

– Same invention must be involved

102(d)Patenting activities outside US

• “Effective filing date of U.S. application”– Actual filing date in the US– Filing date of a parent application from which priority is

properly claimed based on 35 U.S.C. § 120– Filing date of a foreign application from which priority is

claimed based on 35 U.S.C. § 119 does not qualify

• “Same invention”– Specification and/or claims of the foreign application

covers the claims of the US application– Not necessary for both the foreign and US applications

to claim the same inventions

102(d)Patenting activities outside US

• How to avoid problems with § 102(d)?

– File in the US as soon as possible after filing in the foreign country

– Be aware that the disclosure in the foreign patent, not just the claims, is pertinent

– Claim priority under 35 USC § 119, meeting the statutory timing requirement

102(e)Filed or patented by another before invention

• “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.”

102(f) True inventor

“He did not himself invent the subject matter sought to be patented.”

102(f) True inventor

• Originality - “who’s idea was it first”– Prohibits a patent grant to other than the true

inventor

• Requires complete conception by another and communication to the party charged with derivation.– Must be sufficient to enable one of ordinary skill in

the art to construct and successfully operate the invention

102(g) First conception + reduction to practice

“(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.”

102(g) First conception + reduction to practice

• § 102(g) addresses priority, i.e. “who thought of it first”– Prohibits a patent grant to other than the first

inventor

• Prior art– Did a prior inventor reduce invention to practice

first or conceive first and subsequently make the invention, and did not abandon, suppress, or conceal it?

• Prior inventor must have recognized and appreciated existence of invention

102(g) First conception + reduction to practice

• Abandonment, suppression, and concealment– Active concealment: intent to withhold

invention from public– Inferred A/S/C: unreasonable delay in

disclosing invention to public. Failure to:• File application• Use publicly• Describe in publicly disseminated document

102(g) First conception + reduction to practice

• Diligence– Efforts must be reasonably continuous– Must show what was done, when it was

done, and how it relates to reduction to practice

– Reasonable excuses include poverty (but not lack of university funding, investors), sickness, patent attorney taking up application in order

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Thank you to Ms. Jenna Cogswell at MST who helped prepare these slides!

Contact us at johnson@mstfirm.com or 419.255.5900 for permission to use these slides, or to ask questions. We are happy to let others use these slides, but we would like to know who they helped.