35 U.S.C. §102 Conditions for Patentability; Novelty and ... · IP Summer Academy 2016 Boston,...

35 U.S.C. §102 Conditions for Patentability; Novelty

and Loss of Right to Patent, under Pre-AIA statute

July 11, 2016

Lisa Adams, Member

IP Summer Academy 2016


Boston, Massachusetts

July 11 – 22, 2016

35 U.S.C. §102 Conditions for Patentability; Novelty and Loss of Right to Patent, under Pre-AIA statute

© 2016 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.

Conditions for Patentability

2

Under the pre-AIA patent code, to be patentable…

• Invention must be new, useful, and non-obvious.

• Novelty: Not already described or patented elsewhere, or known, used or available to others

in the United States (35 USC §102).

• Utility: Any beneficial use. Generally easy to satisfy (35 USC §101).

• Nonobviousness: Standard is one skilled in the relevant technology (35 USC §103).

Same requirements apply under the AIA, but statute numbers are different for novelty and

nonobviousness.



July 11 – 22, 2016



What constitutes prior art?

3

• 35 USC §102 specifies seven events that will defeat novelty: subsections (a), (b), (c), (d), (e),

(f), and (g).

• Subsections (a), (b), and (e) are most often applied by Examiners in the U.S. Patent &

Trademark Office, and will be discussed in greater detail.

• Many of these §102 events will defeat novelty if they occur prior to the filing date or a priority

date claimed in the patent application.

• Why are we discussing the pre-AIA statute, given that the AIA is now in effect?

– Most pending applications were filed prior to March 16, 2013, or have pre-March 16, 2013 priority dates, and

thus will be examined under old Section 102.



July 11 – 22, 2016



Establishing a priority date

4

• For a U.S. patent application filed under 35 USC §111(a), priority can be claimed to an earlier

U.S. application or foreign application:

– If the application is a continuation, divisional, or continuation-in-part (CIP) of an earlier U.S. application,

then domestic priority can be claimed under 35 USC §120

• The first paragraph of the specification must be amended to include specific reference to the earlier U.S.

application

• Also can be accomplished via an Application Data Sheet (ADS), but we recommend filing a Preliminary

Amendment to amend the specification



July 11 – 22, 2016



Establishing a priority date

5

• To claim foreign priority under 35 USC §119, take the following steps:

• Inform U.S. associate of earlier foreign application

• File a certified copy of the foreign priority application, or if applicable, utilize Priority Document

Exchange (PDX) program for retrieval of priority documents from European Patent Office

(EPO), Japan Patent Office (JPO), or Korean Intellectual Property Office (KIPO)

• Determine if any claims are NOT entitled to pre-March 16, 2013 priority

– Example:

• U.S. application filed on June 1, 2013 under 35 USC §111(a)

• Priority claim under 35 USC §119 to Japanese application filed on June 1, 2012, and U.S. application fully supported

by earlier Japanese application – therefore, AIA will not apply

• Notify U.S. associate of priority claim, so that the priority application will be automatically retrieved by the U.S.

Patent and Trademark Office



July 11 – 22, 2016



35 USC §102(a)

6

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 …



July 11 – 22, 2016



35 USC §102(a)

7




applicant for patent, or …

• Section 102(a) refers to events that will defeat novelty if they occurred before the applicant

invented the claimed invention, not merely before the filing date

• U.S. Examiners will treat the filing date or priority date of application as the invention date

– May swear behind filing date using Rule 131 affidavit, in order to establish an earlier invention date

– Earlier invention date cannot be established under AIA



July 11 – 22, 2016



35 USC §102(a)

8




applicant for patent,

or …

• Section 102(a) applies only to the work of others, not the applicant’s own work. In re Katz, 687

F.2d 450, 215 USPQ 14 (CCPA 1982)

• The term “others” refers to a different inventive entity – if at least one inventor is different, then

a rejection can be made under 35 USC §102(a)

• If inventors are the same, then no rejection under 35 USC §102(a) – can establish “same

inventors” by filing a Rule 132 affidavit



July 11 – 22, 2016



35 USC §102(a)

9





or …

• The “known or used” requirement requires public knowledge or use, and pertains only to

activities occurring in the United States

• Public knowledge or use involves work done openly without any deliberate attempt to

conceal the work from the public



July 11 – 22, 2016



35 USC §102(a)

10





or …

• Publication of the invention can result in anticipation, regardless of where it occurs

• What constitutes a publication?

– Discussed in greater detail under Section 102(b)



July 11 – 22, 2016



35 USC §102(b)

11


(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 …

• Section 102(b) is the “statutory bar”

• U.S. Examiners are instructed to first determine whether a reference qualifies as prior art under

Section 102(b), as described in MPEP 706.02(a)

• If the publication date or issue date of a reference is more than one year before the earliest

U.S. filing date, then the reference qualifies as prior art under 35 USC §102(b)



July 11 – 22, 2016



35 USC §102(b)

12





• Applies to acts by the applicant and others

• Applicant’s own public use, sale, or publication can be prior art if it occurred more than one

year before the effective U.S. filing date

– One-year grace period in the United States



July 11 – 22, 2016



35 USC §102(b)

13





• What qualifies as a patent or printed publication?

– U.S., PCT, and foreign published applications and issued patents

– Books, periodicals, newspapers, catalogs, trade literature, conference papers

– Courts focus on public dissemination and accessibility



July 11 – 22, 2016



35 USC §102(b)

14





• Other examples of printed publications

– Electronic publications (e.g., Internet, LEXIS, etc.)

– Dissertations submitted to university libraries

– Printed slides accompanying presentation

• Oral presentations, even with visual aids, are considered transitory, and thus not “printed publications”



July 11 – 22, 2016



35 USC §102(b)

15





• “Public use” and “on sale” bars apply only to activities occurring in the United States

• “Public use” bar

– Only a single use may be sufficient

– To avoid bar, inventor must attempt to keep the invention secret – have persons witnessing or using

invention sign confidentiality/nondisclosure agreements



July 11 – 22, 2016



35 USC §102(b)

16





• “On sale” bar

– Arises when a definite sale or offer for sale occurred more than one year prior to the U.S. filing date

– Current law: Pfaff test, from Pfaff v. Wells Elecs., Inc., 124 F.3d 1429, aff’d 525 U.S. 55 (1998)



July 11 – 22, 2016



35 USC §102(b): On sale bar

17

• Pfaff test

– The product must be subject of a commercial offer for sale; and

– The invention must be ready for patenting

• Proof of reduction to practice before critical date; or

• Proof that prior to the critical date, the inventor had prepared drawings or other descriptions of the invention that

were sufficiently specific to enable a person skilled in the art to practice the invention

– “Ready for patenting” standard clarified in later Federal Circuit cases

• To be “ready for patenting” the inventor must be able to prepare a patent application with an enabling disclosure,

as required under 35 USC §112

– Space Systems/Loral, Inc. v. Lockheed Martin Corp., 271 F.3d 1076 (Fed. Cir. 2001)



July 11 – 22, 2016



AIA: Public use and on sale bars

18

Old New

§ 102(b):

“A person shall be entitled to a patent unless. . .

(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”

§ 102(a)(1):

“A person shall be entitled to a patent unless. . .

(a)(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”



July 11 – 22, 2016



AIA: Public use and on sale bars

19

Old 102(b) versus new 102(a)(1):

• Effective Filing Date is Critical

– Publicly available approach

– No more ‘in this country’ limitation as it applies to ‘public use’ and ‘on sale’ bars.

– Critical date is effective filing date instead of one year before the date of application in the

U.S.

– “Effective Filing Date” is date of earliest priority claimed application anywhere in world

– If pre-AIA priority is claimed, AIA does not apply



July 11 – 22, 2016



35 USC §102(c)

20


(c) he has abandoned the invention, or…

• Abandonment requires a deliberate surrender of rights

• If applicant inadvertently does not respond within the 6-month statutory period, can file a

petition to revive; 35 USC 102(c) is not invoked



July 11 – 22, 2016



35 USC §102(d)

21


(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 …



July 11 – 22, 2016



35 USC §102(d)

22

• Section 102(d) prevents an applicant from patenting an invention in the United States if the

applicant received a patent in a foreign country before the U.S. filing date on an application

filed more than 12 months before the U.S. filing date

• Easily avoided by filing a U.S. application within 12 months of the filing date of foreign

application



July 11 – 22, 2016



35 USC §102(e)

23


(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 …



July 11 – 22, 2016



35 USC §102(e)

24

• Section 102(e) was amended on November 2, 2002.

• Section 102(e) retroactively applies to all applications filed under §111(a) on or after

November 29, 2000, and all applications complying with §371 that resulted from international

applications filed on or after November 29, 2000

• Previously, only issued U.S. patents qualified as prior art under Section 102(e)

• Reference must be by “another” – at least one inventor must be different



July 11 – 22, 2016



35 USC §102(e)

25

• U.S. Examiner are instructed to follow these Examination Guidelines (see MPEP 706.02(f)(1)):

• The reference must be a U.S. patent, a U.S. published application, or a published PCT

application

• If the reference is not based on a published PCT application, and does not claim priority to an

earlier PCT application – the Section 102(e) date is the earliest effective U.S. filing date



July 11 – 22, 2016



35 USC §102(e)

26

• Examination Guidelines, continued:

Example 1: Publication and patent of application filed under §111(a) with no priority claim

• Section 102(e) date is the filing date of the application, or 08 December 2000



July 11 – 22, 2016



35 USC §102(e)

27


Example 2: Publication and patent of application filed under §111(a) with priority claim to prior U.S. provisional or nonprovisional application

• Section 102(e) date is the earliest effective U.S. filing date. If priority claimed under 35 USC

119(e) or 120 to the earlier application, the Section 102(e) date is 01 January 2000



July 11 – 22, 2016



35 USC §102(e)

28


Example 3: Publication and patent of application filed under §111(a) claiming the benefit of a prior foreign application under 35 USC §119(a)-(d)

• Section 102(e) date is the earliest effective U.S. filing date. No benefit is accorded to the

foreign application filing date under Section 102(e). Section 102(e) date is 21 June 1999



July 11 – 22, 2016



35 USC §102(e)

29

• Examination Guidelines continued:

C. If the reference claimed the benefit of a PCT application, then determine which of the

following applies:

(1) If the PCT application meets the following (a), (b), and (c) conditions, then the

International Filing Date is a U.S. filing date for prior art purposes under Section

102(e):

(a) International Filing Date on or after November 29, 2000;

(b) Designated the United States; and

(c) Published under PCT Article 21(2) in English



July 11 – 22, 2016



35 USC §102(e)

30


Example 4: National Stage application filed under §371(a) of a PCT application that designated the United States and was published in English.

• Section 102(e) date is the International Filing Date because the PCT application designated

the United States and was published in English. Section 102(e) date is 01 Jan. 2001.



July 11 – 22, 2016



35 USC §102(e)

31


(2) If the PCT application was filed on or after November 29, 2000, but did not designate

the United States or was not published in English under PCT Article 21(2), do not treat the

International Filing Date as a U.S. filing date for prior art purposes

The reference may be applied under Section 102(a) or (b) as of its publication date

or under Section 102(e) based on a later U.S. filing date that properly claimed priority to

the PCT application. Example: §111(a) application filed as continuation (CON) of PCT

application



July 11 – 22, 2016



35 USC §102(e)

32


Example 5: National Stage application filed under §371(a) of a PCT application that designated the United States, but was not published in English

• No Section 102(e) date. The published PCT application can be applied under Section 102(a)

or (b) as of its publication date of 01 July 2002



July 11 – 22, 2016



35 USC §102(e)

33


(3) If the PCT application has an International Filing Date prior to November 29, 2000, apply

the old Section 102(e)

(a) For U.S. patents, apply the reference under Section 102(e) as of the earlier of the

date of completion of requirements under 35 USC §371(c)(1), (2), and (4) or the

filing date of a later-filed U.S. application claiming the benefit of the PCT

application



July 11 – 22, 2016



35 USC §102(e)

34


Example 6: National Stage application filed under §371(a) of a PCT application filed prior

to November 29, 2000

• Section 102(e) date is the date of fulfilling requirements under Section 371(c)(1), (2), and (4), or

01 July 2002. However, the published PCT application can be applied under Section 102(a) or

(b) as of its publication date of 01 July 2001



July 11 – 22, 2016



35 USC §102(e)

35




(b) For U.S. and PCT published applications directly resulting from PCT applications, do

not apply these references under Section 102(e)

• These references may be applied as of their publication dates under Sections

102(a) or (b)



July 11 – 22, 2016



35 USC §102(e)

36




(c) For U.S. published applications that claim the benefit under Sections 120 or 365(c)

– for example, a continuation (CON) of a PCT application, apply the reference

under Section 102(e) as of the actual filing date of the later-filed U.S. application



July 11 – 22, 2016



35 USC §102(e)

37

Summary

• Section 102(e) applies to U.S. applications filed under §111(a) on or after November 29, 2000,

and National Stage applications (§371) that have International Filing Dates on or after

November 29, 2000

• Some references have no Section 102(e) date

• Some references can be applied under Sections 102(a) or (b) from PCT publication dates



July 11 – 22, 2016



Comparison of 102(e) with AIA statute

38

Old New

§ 102(e):

“A person shall be entitled to a patent unless.

. .”

• the invention was described in a published

U.S. patent application or patent by

another filed in the United States before

the invention by the applicant

• includes an international application filed

under the PCT only if the international

application designated the United States

and was published in the English

language

§ 102(a)(2):

“A person shall be entitled to a patent unless

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.



July 11 – 22, 2016



Comparison of 102(e) with AIA statute

39

• New § 102(a)(2) versus old 102(e):

– Date that matters is the effective filing date, NOT the date of invention

– Earlier patent filings of others that later become public are prior art as of their effective filing date

– Not limited to novelty destroying art but also art that destroys inventive step

– Not limited to US filings if there is a corresponding US application



July 11 – 22, 2016



35 USC §102(f)

40


(f) he did not himself invent the subject matter sought to be patented, or …



July 11 – 22, 2016



35 USC §102(f)

41

• Section 102(f) bars the issuance of a patent where an applicant did not invent the subject

matter sought to be patented

• U.S. Examiners must presume the applicants are the proper inventors unless there is proof that

(1) another made the invention, and (2) applicant derived the invention from the true inventor

– Rarely invoked during prosecution



July 11 – 22, 2016



35 USC §102(f)

42

• Proving “derivation” under Section 102(f) requires:

(a) The subject matter was conceived in its entirety by another; and

(b) This conception was communicated to the applicant for patent before the applicant’s

earliest date of invention



July 11 – 22, 2016



35 USC §102(f)

43

• Section 102(f) is a prior art provision for purposes of obviousness (§103)

– In OddzOn Products, the Federal Circuit held that, under Section 102(f), a person may not obtain a patent

on subject matter which is obtained from someone else. There is no requirement that the knowledge is

public. OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997)

– Section 102(f) applies to private communications between the inventor and another, unlike Sections 102(a),

(b), and (e)



July 11 – 22, 2016



35 USC §102(g)

44

(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



July 11 – 22, 2016



35 USC §102(g)

45

• Section 102(g) bars the issuance of a patent where another made the invention in the United

States before the applicant and had not abandoned, suppressed, or concealed it

• Section 102(g) forms the basis for the “first to invent” system in the U.S., as compared to the

“first to file” system employed by most countries

• Section 102(g) is used to resolve priority disputes between inventors in an interference

proceeding before the U.S. Board of Patent Appeals and Interferences



July 11 – 22, 2016



35 USC §102(g)

46

• U.S. Examiners may reject a patent application under Section 102(g) if:

1. the subject matter has been actually reduced to practice by another before the

applicant’s invention; and

2. there has been no abandonment, suppression, or concealment



July 11 – 22, 2016



35 USC §102(g)

47

• To qualify as prior art under Section 102(g), there must be evidence that the subject matter

was actually reduced to practice; conception alone is not sufficient

– Evidence of actual reduction to practice is usually not available during prosecution

– Filing of an application is a “constructive” reduction to practice, and not sufficient to show an actual

reduction to practice

– U.S. Examiners are more likely to apply the disclosure of a U.S. patent or publication under Section 102(e)



July 11 – 22, 2016



What constitutes anticipation

48

• Assuming a reference is determined to be prior art under one or more paragraphs of Section

102, the inquiry then becomes whether that prior art anticipates the claimed invention

• For anticipation under Section 102, missing elements cannot be supplied by the knowledge of

one skilled in the art, or by the disclosure of another reference

– If either is required, a rejection can only be made under Section 103 (obviousness)



July 11 – 22, 2016



What constitutes anticipation

49

• After determining that a reference is prior art, the claim is construed to see if the reference

discloses all of the elements. In re Hyatt, 211 F.3d 1367 (Fed. Cir. 2000)

• Material not explicitly contained in the prior art document may be considered for purposes of

anticipation if incorporated by reference into the document

• The argument of “teaching away” does not apply to anticipation under Section 102

– Only applies to Section 103 (obviousness)



July 11 – 22, 2016



Reference must be enabled

50

• To constitute an anticipatory reference, the prior art must contain an enabling disclosure

• A reference is enabling if a person of ordinary skill could have combined the disclosure of the

reference with his own knowledge of the art to place the public in possession of the invention.

In re Donohue, 766 F.2d 531 (Fed. Cir. 1985)

• When a reference expressly anticipates all of the elements of the claimed invention, it is

presumed operable



July 11 – 22, 2016



Anticipation – Ranges

51

• For example, a claim may recite a temperature range or a range of weight percentages

• Such claims are anticipated where the prior art teaches a species falling within the claimed

range



July 11 – 22, 2016



Overlapping Ranges

52

• MPEP 2131.03:

– “When the prior art discloses a range which touches, overlaps or is within the claimed range, but no specific

examples falling within the claimed range are disclosed, a case by case determination must be made as to

anticipation”

– To anticipate the claims, the reference must disclose the claimed subject matter with “sufficient specificity”

• But if the claims are directed to a narrow range, the reference teaches a broad range, and

there is evidence of unexpected results within the claimed narrow range, a rejection may not

be proper because the narrow range is not disclosed with “sufficient specificity” to anticipate

the claims



July 11 – 22, 2016



Inherency

53

• An invention directed to a new use, new function or unknown property is not patentable if the

prior art inherently teaches the use, function, or property

• “Inherency” arises when the prior art “necessarily functions in accordance with, or includes,

the claimed limitations” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999)



July 11 – 22, 2016



Inherency

54

• U.S. Examiners frequently make rejections on inherency, but often make the mistake of

confusing obviousness with inherency

• To support an anticipation rejection based on inherency, the Examiner must provide factual

and technical grounds establishing that the inherent feature necessarily flows from the

teachings of the prior art

• The Examiner can rely on additional references only to support the “inherency” of the

characteristic at issue. Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d at 1268 (Fed.

Cir. 1991)



July 11 – 22, 2016



U.S. Prosecution

55

• During prosecution of a U.S. patent application, Examiners may make anticipation rejections –

Section 102(a), (b), and (e) are the most common, and obviousness rejections under Section

103

• Prior art applied under Section 103 must qualify under one or more subsections of Section 102

• Similar procedure applies under the AIA, except the statute numbers are different, and non-

U.S. patent references can be applied as of their filing dates, instead of publication dates.



July 11 – 22, 2016



U.S. Prosecution – Practice Tips

56

• When receiving one or more prior art rejections in an Office Action from the U.S. Patent &

Trademark Office:

– Consider whether the application is pre-AIA, or should be examined under the AIA

– Check to see if all references applied by the Examiner are prior art under one or more subsections of

Section 102

– Check references applied under both Sections 102 and 103

– Consider whether Examiner is relying on overlapping ranges or inherency, and whether the Examiner’s

statements are proper

– Analyze each rejected claim to determine if the reference meets each and every element and limitation of

the claim


Thank you!

57

Date post:	30-Aug-2018
Category:	Documents
Upload:	vothuan
View:	215 times
Download:	0 times

35 U.S.C. §102 Conditions for Patentability; Novelty and ... · IP Summer Academy 2016 Boston,...

Documents