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Tackling Title 35 - Part 2: Pre-AIA 102



Hello! In this installment of Tackling Title 35, we are going to discuss the pre-AIA version of 35 USC 102. The America Invents Act (AIA) changed the law in this section of Title 35 most dramatically, so I figured that I would discuss them separately. The thing about this kind of material is that it seems to be almost common-sense, and that is why it is hard to learn thoroughly enough to apply to the exam questions.

The text title of this law is Conditions For Patentability; Novelty And Loss of Right to Patent. It is written as a set of negations, that is “A person shall be entitled to a patent unless - “, followed by an ordered list of reasons why the person would not be entitled to the patent. Each of the declarations are fairly short, only a sentence or so, and it is pretty amazing to think about how hard this test is given that this content in Title 35 is so short in length. But the fact is that this small set of guidelines dictates the way that people conduct their livelihoods. This section continues to be a heavily tested section because it lays the groundwork for how examiners grant a patent in real life. Sure, section 101 can come up in the case that the inventor is a phony, but that is one of the rare times that you will point there. 102 will get pointed to for most of the patents that get rejected based on external conditions alone (meaning not in regards to a filing error).

The final note here is that the AIA version of 102 is much more heavily tested than pre-AIA 102. Even in the limited number of practice problems that I have done, most of them at least include post-AIA material. The important thing to note there is that the AIA laws are built off of the old laws, so you’re going to need to understand the stuff below to understand the content in the next installment of this series. So, without further ado, let us begin breaking down section 102.

102(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

So this one is pretty straightforward. In layman’s terms, it means that if the invention was in existence before the inventor conceived it in full, then they were not the creator of that invention. Note that in the last section of this series I talked about the two parts of invention, conception and reduction to practice. You will want to thoroughly remember that the date of invention is the date of conception. There need be no reduction of practice at that point, no filing of paperwork.

Another thing that you will want to keep in mind in regards to this section and future work is that “known or used” implies that they know how it works, not just that you perform with the invention every Friday night at 7PM in your local neighborhood park (maybe an instrument?).

102(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

The way that I remember 102(b) is that it is related to sales, profit, personal gain, etc. It refers to you reaping the benefits of this invention, and gives you a one year grace period. So simple example, you sell 10 units of your new vacuum invention to the hotel that your husband manages, and they are used to clean the rooms in the hotel. Let’s leave alone the possible liabilities and oddities of this particular sale, and focus on the law that it represents. You have one year from the date of your offer to sell the vacuums to file your patent.

Note that this also applies to public use of the invention. This applies mostly to other people's’ use of your invention, not just you using it at a party or something. There is an exception here for experimental use, but the rules are pretty hairy and detailed. If your client is going to go this route, they are going to need a clear argument that fits a substantive set of guidelines to ensure that the use was indeed experimental. I will update if I come across an instance where this aspect would need to be dissected, but I assume that any question in the area of the exception would be fairly straightforward.

102(c)

  • he has abandoned the invention, or

I’m not going to spend much time on this one because the Patent Office generally won’t either, but essentially it is impossible to abandon your invention. Think about it, once you’ve invented something, how can “uninvent” it? The answer is that you need to ridicule the invention in a way that others acknowledge that you don’t believe in the benefits of the invention.

102(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

This one is worded in an impressively complicated way for how simple a law it is. Maybe somebody was trying to “codify for job security”. Haha, just kidding, but if you are or were a Software Developer you may cringe at one who “codes for their job security”, so I like using my cross-context paraphrase for these types of situations.

All this says is that if you get a patent in a foreign country, and then wait too long to file in the United States (12 months), your out of luck for getting the patent here.

102(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

This is a weird part of the law that you are going to want to review carefully and thoroughly. It has to do with what as known as the Effective Filing Date (EFD), which as you can probably guess is the filing date for Prior Art (PA).

I am assuming that in reading this, you are more so honing skills that you are acquiring from another study aid. If you are not using a study aid, kudos to you and I would love to hear about your method for preparing for this exam. But that aside, I am not going to break down the details of this.

One thing of note is that PA discovered through 102(e) is known by some as “pop up prior art” because you can be unaware of another patent that is underway but not yet published. This is also going to bring about the difference between how “foreign” and “international” patents are filed. In the real world, these two words are synonymous, but in the world of 102(e) they are different in that an International patent is filed under the rules of the PCT.

102(f)

  • he did not himself invent the subject matter sought to be patented, or

You may think that 102(f) is redundant with 101 when you first start looking at this stuff, at least I know I did. What you come to realize is that this law applies in more flexible circumstances. One example, say that Einstein and his assistant truly co-invent some new scientific breakthrough. Since the assistant had a part in the conception, he needs to be included on the patent. If this seems kind of silly to you, think about what a patent really is. It is a signature of innovation. The USPTO does not to misrepresent the full signature, because at the end of the day that’s the whole point of the process.

102(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.

This section is all about interference, and like 102(e), I’m not going to go over every detail of this one because I assume that you are doing further research into interference. You should know that this is one aspect of the law that the AIA is attempting to get rid of, but there are some doubts whether interference will ever completely be done away with, and there are tons of patents still being process that 102(g) will apply to, whether they are filed after the famous date M16 ‘13 (March 16, 2013), or not. This is because any prior art from before this date will result in a “transition” patent application, in which AIA 102 will apply, but 102(g) will be included.

I hope that you enjoyed this installment of Tackling Title 35. In the next post, we will discuss AIA 102, the “new” law of the land for patents.



Author


Ted Rand