|← MPEP 2131||↑ MPEP 2100||MPEP 2133 →|
|35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.|
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 a patent.
. . .
I. "KNOWN OR USED"
- The statutory language "known or used by others in this country" means knowledge or use which is accessible to the public.
- The knowledge or use is accessible to the public if there has been no deliberate attempt to keep it secret.
- The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.
- But a secret use of the process coupled with the sale of the product does not result in a public use of the process unless the public could learn the claimed process by examining the product.
- Therefore, secret use of a process by another, even if the product is commercially sold, cannot result in a rejection under 35 U.S.C. 102(a) if an examination of the product would not reveal the process.
II. "IN THIS COUNTRY"
- The knowledge or use relied on in a 35 U.S.C. 102(a) rejection must be knowledge or use "in this country."
- Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under 35 U.S.C. 102(a).
III. "BY OTHERS"
- The term "others" in 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity.
- The entity need only differ by one person to be "by others."
- This holds true for all types of references eligible as prior art under 35 U.S.C. 102(a) including publications as well as public knowledge and use.
IV. "PATENTED IN THIS OR A FOREIGN COUNTRY"
See MPEP 2126 for information on the use of secret patents as prior art.
2132.01 Publications as 35 U.S.C. 102(a) Prior Art[edit | edit source]
35 U.S.C. 102(a) PRIMA FACIE CASE IS ESTABLISHED IF REFERENCE PUBLICATION IS "BY OTHERS"
A prima facie case is made out under 35 U.S.C. 102(a) if, within 1 year prior to the filing date, the invention, or an obvious variant thereof, is described in a "printed publication" whose authorship differs in any way from the inventive entity unless it is stated within the publication itself that the publication is describing the applicant's work.
See MPEP 2128 for case law on what constitutes a "printed publication."
Note that when the reference is a U.S. patent published within the year prior to the application filing date, a 35 U.S.C. 102(e) rejection should be made. See MPEP § 2136 - § 2136.05 for case law dealing with 102(e).
APPLICANT CAN REBUT PRIMA FACIE CASE BY SHOWING REFERENCE’S DISCLOSURE WAS DERIVED FROM APPLICANT’S OWN WORK
Applicant's disclosure of his or her own work within the year before the application filing date cannot be used against him or her under 35 U.S.C. 102(a).
Such a rejection can be overcome by:
- filing an affidavit made out by the other authors establishing that the relevant portions of the publication originated with, or were obtained from, applicant (called a disclaiming affidavit)
- submitting a specific declaration by the applicant establishing that the article is describing applicant's own work.
- adding the coauthors as inventors to the application if the requirements of 35 U.S.C. 116, third paragraph are met.
- In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982)
- Ex parte Kroger, 219 USPQ 370 (Bd. Pat. App. & Inter. 1982)
See also case law dealing with overcoming 102(e) rejections as presented in MPEP § 2136.05. Many of the issues are the same.
A 37 CFR 1.131 AFFIDAVIT CAN BE USED TO OVERCOME A 35 U.S.C. 102(a) REJECTION
When the reference is not a statutory bar under 35 U.S.C. 102(b), (c), or (d), applicant can overcome the rejection by swearing back of the reference through the submission of an affidavit under 37 CFR 1.131. If the reference is disclosing applicant's own work as derived from him or her, applicant may submit either a 37 CFR 1.131 affidavit to antedate the reference or a 37 CFR 1.132 affidavit to show derivation of the reference subject matter from applicant and invention by applicant.
See MPEP 715 for more information on when an affidavit under 37 CFR 1.131 can be used to overcome a reference and what evidence is required.
- In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1965)
- In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969)
|← MPEP 2131||↑ MPEP 2100||MPEP 2133 →|