[NOTE: This article is part 2 of our Patentability Overview series. To start reading from the beginning please see Patentability Overview: When can an invention be patented?]
Despite the impression given by the low hurdle presented by the first two patentability requirements (i.e., eligibility and utility), not every invention is patentable. One of the most common problems for applications is 35 U.S.C. §102, which sets forth the doctrine of anticipation by requiring novelty of invention. Essentially, §102 requires the patent applicant to demonstrate that the invention is new. In essence, in order for a claimed invention to violate this “newness” requirement it must be exactly identical to the prior art.
In order to understand the requirements of §102 it will be helpful to explore the concept of anticipation in detail. A claim is said to be “anticipated” if comparison of the claimed invention with a prior art reference reveals that each and every element in the claim under attack is shown or described, organized, and functioning in substantially the same manner as in the prior art reference.
Anticipation is perhaps most easily understood as the converse of infringement: “That which will infringe, if later, will anticipate, if earlier.” So one way to look at whether your invention is new, as is required under the meaning of §102, is to ask whether your invention would infringe another patent already issued. In the situation where the reference is not a patent but is a printed publication ask whether your invention would infringe if the printed publication were an issued patent instead of just a printed publication.
The standard for anticipation (and hence for newness) is a rigorous one; requiring that every element of the claimed invention, as arranged in the claim, be disclosed either specifically or inherently by a single prior art reference. To be sure, every element of the challenged claim need not be expressly delineated in a single prior art reference, but may be inherently disclosed by prior art if “the prior art necessarily functions in accordance with the limitations” of the challenged claim. However, if the decision-maker (i.e., judge or patent examiner) must go beyond a single prior art reference, the proper challenge is under 35 U.S.C. §103 for obviousness, not §102 for novelty. A reference will, however, anticipate a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.
Effective March 16, 2013, the United States changed its patent laws to move from a first to invent jurisdiction to a first to file jurisdiction. The America Invents Act (AIA) is responsible for making this change, and the importance of the change is difficult to overstate. First to file really must be interpreted as requiring inventors to file first before disclosing the invention. If you happen to disclose the invention before you file a patent application you really need to file fast – there is still some hope you can obtain a patent due to the presence of a grace period, but the grace period is very narrow and should not be relied upon.
For applications filed on or before March 15, 2013, first to invent laws will apply. It is also possible that applications filed on or after March 16, 2013 will be examined under first to invent laws as well, but if and only if all of the claims in the application are entitled to a priority date of March 15, 2013 or earlier.
So-called pre-AIA novelty law (i.e., the law applied for applications filed on or before March 15, 2013, or applications with all claims having priority on or before March 15, 2013) is rather peculiar at first glance. Not all references, knowledge or events that demonstrate an invention is “old” or already known can be used by patent examiners to reject a patent claim. Before we go to far down this path lets set some definitive rules:
- If the invention in question was described in a patent issued anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
- If the invention in question was described in a printed publication published anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
- If the invention were publicly known in the US, but not necessarily patented or published, prior to the patent applicant inventing it, then no patent can be obtained.
In each of these three cases we would say that the earlier reference or knowledge is prior art that prevents a patent from now issuing.
Now some more rules:
- If the invention in question was described in a patent issued anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
- If the invention in question was described in a printed publication published anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
- If the invention in question was publicly used in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
- If the device, machine or compound in question was offered for sale in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
In each of these four cases we would also say that the earlier reference, knowledge or event is prior art that prevents a patent from now issuing, but this time not because the invention was not new, but rather because an application was made in the US too late!
One of the biggest changes to U.S. patent laws brought about by the AIA relates to the move from a “first to invent” system to a “first inventor to file” system. Saying that we have a first to file system, however, might be a little misleading given that the term “first to file” has certain international meanings that do not apply.
A pure first to file system is one that demands absolute novelty in order to obtain a patent. A pure first to file system means that if there is a use, sale or publication of information relating to the invention prior to the filing of a patent application no patent can be obtained. This is not exactly what the U.S. first to file system mandates.
Inventors should start with the presumption that if there has been a disclosure of the invention prior to filing a patent application in the U.S. no patent can be obtained. However, if the disclosure of the invention was made by the inventor and occurs within 12 months of the filing of a patent application in the U.S. the disclosure can be removed as prior art. If the disclosure is by someone other than the inventor and that other, third party did not obtain the invention information from the inventor it may be impossible (and likely will be impossible) to remove the disclosure as prior art, which is why first to file rules must be interpreted as requiring inventors to file first!
Under the U.S. first to file system it is true that the inventor will still have a personal grace-period to remove their own disclosures. This personal grace-period says that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not capable of being used as prior art as long as they occurred within 12 months of the filing date of a patent application. However, and this is a very big however, disclosures of third-parties who independently came up with the invention information themselves will be used against the inventor unless the disclosure is of the same subject matter.
What does this mean? The Patent Office has given an example, using letters. Inventor discloses XY prior to filing a patent application. A third party obtains the XY disclosure and in turn discloses XYZ. The Patent Office explained that at least what is different – in this case Z – will be used as prior art against the inventor and cannot be removed as prior art.
It is difficult to come up with realistic hypothetical examples where the grace-period will likely be useful in an AIA universe. Inventors should, therefore, operate under the assumption that there will be virtually no chance that a grace-period will exist relative to third party, independently created disclosure. This is an enormous difference between the old law and the new law.
While it is true that some grace-period does remain, no one should rely on the grace-period. At best, the AIA 102 grace-period should be thought of as an possible way to address the mistake of not having filed first. The AIA 102 grace-period should never be relied upon before the fact by inventors. It is just too fragile.
CLICK HERE to CONTINUE READING… Up next will be discussion of the obviousness requirement under 35 U.S.C. § 103. Please also see: Understanding Obviousness and When is an Invention Obvious?
For more information on patent basics please see:
- An Alternative to Claim Mirroring in Initial Patent Application Filing
- IP Goes Pop! You Can’t Do That – What IP Cannot Protect
- How to Use the USPTO Patent Public Search Tool
- Using Analytics to Assess the Effectiveness of Common Patent Prosecution Practices
- Tips from a Former Examiner on How to Conduct Interviews at the USPTO
- Ten Mistakes to Avoid When Drafting Information Disclosure Statements
- Defanging Descriptive Material Rejections
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Disclosure Requirements in Software Patents: Avoiding Indefiniteness
- Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand
- Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
- Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures
- Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668
- Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Errors in Issued Patents as a Measure of Patent Quality
- Intellectual Property for Startups: Building a Toolkit to Protect Your Products and Design
- Why the Patent Classification System Needs an Update
- Understanding What a Design Patent is Not
- Design Patents: Under Utilized and Overlooked
- Deciding Where to Obtain International Patent Rights
- When to Use the Patent Cooperation Treaty—and Why It’s So Popular
- Why and When Design Patents are Useful
- PCT Basics: Obtaining Patent Rights Around the World
- ipAwarenessAssessment: Inventors and Business Owners Should Start Their IP Journey with this USPTO-NIST Tool
- Successful After Final Petitions Can Help Advance Prosecution (Part V)
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- WIPO’s INSPIRE Offers a New Way to Select Databases for Patent Searches Involving Machine Translations
- Understand Your Utility Patent Application Drawings
- Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First
- Implications of Filing Subsequent Patent Applications in the United States (Part III)
- Types of Subsequent Patent Applications in the United States (Part II)
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Applying for a Patent in Germany
- Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO
- Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table
- Patent Office Insights from Two Former Examiners
- Conventional Patent Wisdom Revisited
- Develop Your Database of Templates for Responding to Office Actions
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- Four Things C-Suite Executives Need to Know About Patents
- Starting the Patent Process on a Limited Budget
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
Join the Discussion
4 comments so far.
Ned HellerJune 12, 2017 11:57 am
Thanks Gene, and I agree.
BTW, my arguments re: constitutionality of IPRs has finally prevailed. The Supreme Court will take Oil States.
Oil States Energy Services, LLC, Petitioner
Greene’s Energy Group, LLC, et al.
Docketed: November 29, 2016
Linked with 16A365
Lower Ct: United States Court of Appeals for the Federal Circuit
Case Nos.: (2015-1855)
Decision Date: May 4, 2016
Rehearing Denied: July 26, 2016
~~~Date~~~ ~~~~~~~Proceedings and Orders~~~~~~~~~~~~~~~~~~~~~
Oct 13 2016 Application (16A365) to extend the time to file a petition for a writ of certiorari from October 24, 2016 to November 23, 2016, submitted to The Chief Justice.
Oct 14 2016 Application (16A365) granted by The Chief Justice extending the time to file until November 23, 2016.
Nov 23 2016 Petition for a writ of certiorari filed. (Response due December 29, 2016)
Dec 12 2016 Waiver of right of respondent Michelle K. Lee, Director, Patent and Trademark Office to respond filed.
Dec 19 2016 Order extending time to file response to petition to and including January 30, 2017.
Jan 30 2017 Brief of respondent Greene’s Energy Group, LLC in opposition filed.
Feb 14 2017 Reply of petitioner Oil States Energy Services, LLC filed.
Feb 15 2017 DISTRIBUTED for Conference of March 3, 2017.
Feb 27 2017 Response Requested from Michelle K. Lee, Director, Patent and Trademark Office. (Due March 29, 2017)
Mar 22 2017 Order extending time to file response to petition to and including April 28, 2017.
Apr 28 2017 Brief of Federal Respondent in opposition filed.
May 15 2017 Reply of petitioner Oil States Energy Services, LLC filed.
May 16 2017 DISTRIBUTED for Conference of June 1, 2017.
Jun 5 2017 DISTRIBUTED for Conference of June 8, 2017.
Jun 12 2017 Petition GRANTED limited to Question 1 presented by the petition.
Gene QuinnJune 11, 2017 09:29 pm
There are a lot of things about the law that bother me. My pet issue along these lines is that a reference in a language the inventor does not speak or read will anticipate. That doesn’t strike me as fair or appropriate if the idea of a patent system is the dissemination of knowledge. Exactly how is information in a language not spoken by the masses contributing to the knowledge base? Perhaps today with the existence of machine translations it isn’t as big an issue as it once was, but before machine translations and in an era where U.S. patent laws were protectionist it never made much sense to me.
Edward HellerJune 11, 2017 04:21 pm
You know Gene, something that has always bothered me about the law in that the public use of a product will anticipate even if no one knows what the composition is or how to make it.
Take the case of Pennock v. Dialogue. The inventor came up with a way of making fire hoses that no one else could duplicate because of the process and materials in making the hose. The hose itself was publicly sold under the authority of the inventor. Apparently, when others begin to understand how the hose was made, the inventor went off and applied for patent.
Ultimately it was ruled that the public use of the firehose and placing it on sale prior to filing a patent application (the grace period was yet to come) was an abandonment of the right to file a patent application: an equitable defense that is now known as a “statutory bar.”
But the principle of prior art must be that the invention is known to the public and in the public domain. If one cannot reproduce the patented product, in the case of Pennock, the patent firehose, because one does not know exactly what the materials and process it takes to make that product, then is the product really prior art to another who not only discloses what the product is in his patent application, but a method of making it?
Consider a product by process claim. Disclosure of the product itself does not disclose process. I hope we can agree that the disclosure of the product itself does not anticipate the claim.
I have had actual cases where this issue was important. It has always seemed to me that if the product sold does not disclose the invention in a way that the public can understand not only what it is, but how to make it, than that the product cannot anticipate.
This is somewhat the law with respect to published references. If the reference is not enabling, it is not anticipatory prior art. Why is not the law the same with respect to products?
BennyJune 11, 2017 05:28 am
“A reference will, however, anticipate a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention”
This should be self-evident, but is sometimes ignored by US examiners and denied by attorneys replying to office actions.