• A Discussion of 35 U.S.C. 102: Conditions For Patentability; Novelty And Loss Of Right To Patent (Part 1)
  • February 13, 2005 | Author: K. Scott O'Brian
  • Law Firm: McNees Wallace & Nurick LLC - Harrisburg Office
  • The Patent Laws are codified under title 35 of the United States Code. Among their most important provisions is Section 102, which is directed to "Conditions for patentability; novelty and loss of right to patent". Part 1 of this discussion analyzes subsections a) and b) of Section 102.

    Subsections a) and b) of Section 102 provide as follows:

    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
    (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

    Note the alternate structure of Section 102. In other words, so long as none of the subsections of Section 102 apply, the invention satisfies the conditions for novelty. However, if one or more or the subsections of Section 102 are not satisfied, novelty is lacking, and patent protection is not available.

    Subsection a):
    The term "before the invention" requires clarification. It is generally accepted that the date of invention is the date a patent application is filed with the US Patent and Trademark Office, although there are several narrow exceptions where the inventor can establish a pre-filing date of invention or where the disclosure reference used against the inventor is derived from the inventor's own work. Therefore, certain knowledge and documented materials in existence prior to the filing date of the patent application may satisfy Subsection a).

    Next, it is important to realize a distinction between what is known by persons living in the United States ("this country") versus what is known by inhabitants of other countries. That is, according to this subsection, if the only person(s) who have a full understanding of the subject matter of the invention are foreign inhabitants, novelty has not been violated. However, novelty is violated if US inhabitants have full knowledge of or are practicing the invention. This distinction, which is contrary to the laws of most other countries, is becoming less of a concern due to the worldwide spread of knowledge through resources such as the Internet.

    "Printed publications" include published papers, advertisements, or other documents that are considered publicly available, as well as published patent applications and issued patents. What about materials available on other media, such as microfilm or computer media? The courts typically define "printed publications" to mean any material that is in tangible form available to the public. Therefore, even a document stored in obscure locations in libraries may be considered a printed publication if the document was available to those persons most likely to be interested in accessing it.

    Subsection b):
    The term "patented" in this section refers to the date a patent was issued by the US Patent and Trademark Office. On certified copies of US patents issuing within the last thirty years, the date appearing beneath the US patent number in the upper right hand corner of the document is the issue date. Even if not patented, a printed publication, as previously discussed, which contains a sufficient discussion of the subject matter of the invention, can also be cited against a proposed invention under subsection b), irrespective of its country of origin.

    The term "public use" refers to use that is accessible by the public. While this typically is commercial use, such as selling an item that includes the invention, public use can also include making the invention available to the public in a non-commercial sense, such as showing the invention to a friend without a non-disclosure agreement or other limiting condition to prevent disclosure to others.

    The term "on sale" refers to the sale or attempted sale of the invention. It is not necessary that an actual sale take place, or that an article be available for sale. In other words, a contract for sale, even prior to the fabrication of a first article, can be deemed a sale if the invention was considered "complete", such that further experimentation to confirm the operation of the invention was clearly not at issue.

    While subsection a) is somewhat open-ended as to the date of invention, subsection b) is specific in its identification of time frame, as the filing of a patent application occurs on a specific date. If any of the triggering conditions of subsection b) occur more than one year prior to the filing date of the patent application, they constitute a violation of novelty that creates an absolute bar to obtaining a patent for the invention. It is for purposes of certainty that the examiners in the US Patent and Trademark Office prefer to cite Section 102(b) references against proposed inventions.