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© 2011 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP

35 USC §102 Conditions for Patentability; Novelty and Loss of Right to Patent2012 IP Summer Seminar

Steven M. [email protected] 2012

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Conditions for Patentability

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).♦ Non-obviousness: Standard is one skilled in the relevant

technology (35 USC §103).

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What constitutes prior art?

♦ 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.

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Establishing a priority date

♦ 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

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Establishing a priority date

♦ To claim foreign priority under 35 USC §119, take the following steps:1.Inform U.S. associate of earlier foreign application2.Reference the earlier foreign application in the Declaration & Power of

Attorney3.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)♦ Example:

♦ U.S. application filed on June 1, 2011 under 35 USC §111(a)♦ Priority claim under 35 USC §119 to Japanese application filed on

June 1, 2010♦ Notify U.S. associate to make a priority claim, and list priority

application on Declaration, so that the priority application will be automatically retrieved by the U.S. Patent and Trademark Office

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35 USC §102(a)

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 …

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35 USC §102(a)

♦ A person shall be entitled to a patent unless—(a) the invention was known or used by others in this country, or


♦ Section 102(a) refers to events that will defeat novelty if theyoccurred 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

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35 USC §102(a)



♦ 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 35USC §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

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35 USC §102(a)



♦ 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

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35 USC §102(a)



♦ 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)

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35 USC §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 thiscountry, more than one year prior to the date of the applicationfor 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)

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35 USC §102(b)

A person shall be entitled to a patent unless—(b) the invention was patented or described in a printed publication


♦ 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

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35 USC §102(b)

A person shall be entitled to a patent unless—(b) the invention was patented or described in a printed publication


♦ 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

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35 USC §102(b)



♦ 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”

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35 USC §102(b)



♦ “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

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35 USC §102(b)



♦ “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)

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35 USC §102(b): On-sale bar

♦ 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)

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35 USC §102(c)

♦ A person shall be entitled to a patent unless—(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

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35 USC §102(d)

♦ A person shall be entitled to a patent unless—(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 UnitedStates, or …

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35 USC §102(d)

♦ Section 102(d) prevents an applicant from patenting an inventionin 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

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35 USC §102(e)

A person shall be entitled to a patent unless—(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) apatent 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 thetreaty 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 …

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35 USC §102(e)

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

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35 USC §102(e)

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

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

B. 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

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35 USC §102(e)

♦ 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

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35 USC §102(e)

♦ Examination Guidelines, continued: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

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35 USC §102(e)

♦ Examination Guidelines, continued: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 underSection 102(e). Section 102(e) date is 21 June 1999

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35 USC §102(e)

♦ 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

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35 USC §102(e)

♦ Examination Guidelines, continued: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 thePCT application designated the United States and was published in English. Section 102(e) date is 01 Jan. 2001.

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35 USC §102(e)

♦ Examination Guidelines, continued:(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 dateor 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

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35 USC §102(e)

♦ Examination Guidelines, continued: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

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35 USC §102(e)

♦ Examination Guidelines, continued:(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

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35 USC §102(e)

♦ Examination Guidelines, continued: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 underSection 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

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35 USC §102(e)


November 29, 2000, apply the old Section 102(e)(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)

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35 USC §102(e)


November 29, 2000, apply the old Section 102(e)(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

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35 USC §102(e)

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

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35 USC §102(f)

A person shall be entitled to a patent unless—(f) he did not himself invent the subject matter sought to be

patented, or …

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35 USC §102(f)

♦ 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

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35 USC §102(f)

♦ 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

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35 USC §102(f)

♦ 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)

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35 USC §102(g)

(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

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35 USC §102(g)

♦ 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 ofPatent Appeals and Interferences

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35 USC §102(g)

♦ 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

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35 USC §102(g)

♦ 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)

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What constitutes anticipation

♦ 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)

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What constitutes anticipation

♦ 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)

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Reference must be enabled

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

♦ A reference is enabling if a person of ordinary skill could havecombined 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

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Anticipation – Ranges

♦ 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

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Overlapping Ranges

♦ MPEP 2131.03:♦ “When the prior art discloses a range which touches, overlaps

or is within the claimed range, but no specific examples fallingwithin 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

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Inherency

♦ 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)

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Inherency

♦ 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 establishingthat 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)

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U.S. Prosecution

♦ 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

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U.S. Prosecution – Practice Tips

♦ When receiving one or more prior art rejections in an Office Action from the U.S. Patent & Trademark Office:1. Check to see if all references applied by the Examiner are

prior art under one or more subsections of Section 1022. Check references applied under both Sections 102 and 1033. Consider whether Examiner is relying on overlapping ranges

or inherency, and whether the Examiner’s statements are proper

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

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Thank you for your attention!

Please contact me if you have any further questions.

Email: [email protected]

35 USC §102 Conditions for Patentability; Novelty and …media.lockelord.com/files/upload/102...

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