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2.3 – 35 U.S.C. § 102(a)

35 U.S.C. 102(a) List Patent Bar

“A person shall be entitled to a patent unless 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.”

There are a lot of different interpretations of “was known or used” but basically the invention has to be unique (someone else can not have already invented and be using the invention) before the effective filing date in the USA and the invention can’t be shown in a prior filed patent or printed publication anywhere in the world before the effective date of invention seeking to be patented.

  • 102(a) applies if the invention was known or used before the date of invention (not the filing date) by a 3rd party.
  • Activities in NAFTA countries (12/8/93) and WTO countries (1/1/96) may be introduced to prove earlier conception and reduction to practice.

Overcoming a 102(a) Rejection:

1.  Swear back to an earlier conception date (commonly referred to as using Rule 31).

This can be done by using a 37 C.F.R. 1.131 affidavit through which an applicant can prove prior conception to the prior art used in a 35 U.S.C. § 102 rejection.  The applicant must establish reduction to practice before the application’s filing date, or establish conception and diligence up to the application fling date.

2.  Prove derivation on a reference:

An applicant can prove that the referenced prior art was derived from the applicant.  This is done through using a 37 C.F.R. 1.131 affidavit.

3.  Amending the claims:

Simply amend the claims so that they will not interfere with the prior art.  It is important to note that there can be no new matter not supported in the original disclosure added with the amendment.

4.  Persuasive Arguments:

The applicant or their representative can persuasively argue to the examiner that the reference used in the 35 U.S.C. § 102(a) rejection is not prior art to the new application.

5.  Perfect Priority:

One can file an application data sheet with specific reference to prior applications using 35 U.S.C. § 119(a)-(e) or 35 U.S.C. § 120.