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1.2 – Summary of 35 U.S.C

What is it?

35 U.S.C. is a title of the United States Code which governs all US patent law.  This text is created by the U.S. government and is a type of “living text” in that it is changed when new laws are made regarding patent law.  An example of this would be the recent enactment of the America Invents Act (AIA).

Contents:

35 U.S.C. contains 37 chapters with 376 sections.

There are four parts of the title:

Part I–United States Patent and Trademark Office

Part II—Patentability of Inventions and Grant of Patents

Part III—Patents and Protection of Patent Rights

Part IV–Patent Cooperation Treaty

Part one of 35 U.S.C. establishes the United States Patent and Trademark Office (USPTO) and gives it the powers necessary to run the patent system for the USA.  Part two deals with patentability of inventions and the granting of patents.  Part two contains four main sections used in the patent bar exam: section 101 (What can be patented?), section 102 (Has it been done before?), section 103 (Is it obvious?) and section 112 (What form and content must be used?).  Part three addresses patent and protection of patent rights and deals mainly with activities after a patent has actually issued.  Finally part four is the patent cooperation treaty (PCT) which is an international treaty detailing how patent rights in one country are dealt with in another country.

Why is it important?

35 U.S.C. is tested heavily on the patent bar exam as it is the basis for the MPEP.  The important laws should be memorized (101, 102, 103, 112) if you want to pass the exam.  Also, a good reference for these laws is appendix L of the MPEP which lists all of the different 35 U.S.C. laws.

 Referencing 35 U.S.C. laws:

Below is an example of how a reference to a 35 U.S.C. code is made.  This is important to understand since as you progress through the study guide you will see many of these references.

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2.2 – 35 U.S.C. § 102

35 U.S.C. § 102 – Anticipation

Subsection 102 of 35 U.S.C. contains 7 sub rules which deal with anticipation rejections.  A rejection is anticipation when it relies on prior art to prove it is not novel and it has been done before.  Some of the 102 rejections are statutory bars in which there is no way to overcome a rejection if the requirements of the statutory bar are met.  An example would be 35 U.S.C. § 102(b) in which a disclosure of the invention in a patent or printed publication more than one year before the applications filing date bars the new applicant from obtaining protection on the disclosed subject matter.

An examiner will review the patent application once it is submitted to the USPTO.  During the review of the application, the examiner will review the claims in light of 35 U.S.C. § 102 whilst performing a prior art search to see if the invention is indeed novel.  If prior art is found which describes the invention as claimed the examiner will issue a 102 rejection.

The possible 35 U.S.C. § 102 rejections are:

35 U.S.C. § 102(a): Known or used in USA, or patented/described world wide before the invention currently seeking patent.

35 U.S.C. § 102(b): Patented/described world wide, or in public use/on sale in USA more than one year prior.

35 U.S.C. § 102(c): Inventor intended to abandon.  Must be intentional abandonment.

35 U.S.C. § 102(d): Filed in USA by same applicant more than 1 year before with enforceable rights at the time of the new filing and be the same invention.

35 U.S.C. § 102(e): Described in published application by another in USA (certain international as well) prior or in a patent granted to another in the USA prior.

35 U.S.C. § 102(f): Applicant did not invent the subject matter.

35 U.S.C. § 102(g): Applicant looses an interference proceeding.

Overcome a 35 U.S.C. § 102 rejection:

There are certain ways to overcome a 35 U.S.C. § 102 rejection depending on what type of 102 rejection it is.  Each sub post for the different 35 U.S.C. § 102 categories will discloses commonly used methods of trying to overcome the different 35 U.S.C. § 102 rejections.


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2.1 – 35 U.S.C. § 101

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”

As previously mentioned in the section 2.0, 35 U.S.C. § 101 defines what can be patented.

In order to be patentable an invention must fall into one of the following categories: machine, manufacture, composition of matter or process.  A process invention can include a product-by-process invention.

For a claim to be proper it cannot site multiple categories (1-4 from above) in a single claim.  The invention can also be an improvement upon a previously invented item from 1-4 above.

Patentable Subjects:

1) Product:  A new, useful and non-obvious machine, manufacture and composition of matter.

2) Process:  A new, useful and non-obvious way of doing, making and using something or a new process for an unpatentable product can still be patentable.  Process claims must utilize steps to obtain the product and not just the result of the process without any steps.

3) Product-by-process:  For product by process inventions, the product is patentable and not the process.  The product is independent of the process used to create the product.  When prior art depicts the same product but through a different process the product is still unpatentable even though the process differs.

4) Living subject mater is patentable but human ingenuity must be used to invent the new matter.

One cannot obtain a patent to practical applications of natural phenomenon.

Not Patentable:

1) Naturally occurring materials or organisms.

2) An invention encompassing a human being at its broadest reasonable interpretation.

3) Laws of mathematics, physics and processes which depend on these laws.  A claim which is directed to the practical application of these laws can be patentable however.

4) Computer related descriptive material is not patentable they are copyrightable.

 

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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.

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2.4 – 35 U.S.C. § 102(b)

35 USC 102(b) List

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

35 U.S.C. 102(b) is what is called a statutory bar.  Basically the invention cannot be disclosed (or patented) in the USA or a foreign country, or be in public use or on sale more than one year prior to the new applications effective filing date.

For the rejection of claims under 35 U.S.C. § 102(b) the examiner can cite:

1.  Activity by a third party or the applicant in the USA.

This can include public use or sale of the invention sought to be patented.

2.  Prior art from third party or the applicant.

Prior art can include a patent or a printed publication.

Must be more than one year before applicant’s effective date.

The 35 U.S.C. § 102(b) creates an absolute bar in which the dates of the invention are irrelevant if they are after the 1 year period.  This one year grace period is unique to the U.S. patent system.

Filing Date Topics:

The filing date for use in a 35 U.S.C. § 102(b) rejection is the data the application is filed with the USPTO.  For a continuation (35 U.S.C. § 120) or divisional (35 U.S.C. § 121) application, they can have earlier filing dates if: the old application supports the new claims through 35 U.S.C. § 112, the specification contains a reference to the old application and the new application is filed before the old application issues or is abandoned (co-pending applications).

Both US and foreign patents can be used as prior art however they can not be secret or private.  US patents can be used from date of issuance, not from the filing date or publication date.  Foreign patents can be used from the date the rights became enforceable.  Refer to MPEP § 2126.01 for more information.

Printed publications can also be used as prior art.  To be used as prior art one of ordinary skill in the art must be able to locate the printed publication with reasonable diligence.  Proof of when the reference was published or was made available to the public is needed for the reference to be able to be used as prior art.  The availability of the reference to be used in a 35 U.S.C. § 102(b) rejection is based on this date of public availability.  When the reference does reach the public it must be publicly accessible.  An example of this would be being indexed in a library.  A published patent application is considered a printed publication.  Confidential disclosures are not printed publications.

Provisional applications:

An applicant can claim priority to a provisional 35 U.S.C. § 111(b) application up to 12 months from the provisional filing date.  By doing so the applicant can receive the provisionals filing date to over come prior art reference.

Foreign Applications:

Earlier filed foreign applications cannot be used to overcome a § 102(b) statutory bar.  An applicant is only entitled to 35 U.S.C. § 119 foreign filing date if it is during the pendency of the US application.  The application must include: Identification of the foreign application (through application number, country it was filed in and filing date); The inventors on the foreign application must be the same; Any new claims must be supported through 35 U.S.C. § 112 in the foreign application.

Public Use:

The public use bar only applies to use in the USA.  A hidden use in public can still be considered a bar.  An example would be a new invention for underwear which was tested in public.  The use can not be secret use to qualify under the public use bar.  Also, the inventor must maintain control at all times during the use.

On Sale:

The on sale bar includes the item being sold, offered for sale and tested in the USA only.  If the invention is misappropriated and a sale occurs it is still an on sale bar.  The assigning of rights to a patent does not constitute an on sale bar and will not provoke the 35 U.S.C. § 102(b) on sale bar.

Regarding the barring through an offer for sale, the offer doesn’t need to be accepted to provoke the 35 U.S.C. § 102(b) bar.  Additionally, the product details do not need to be disclosed.  The offer for sale can be made by anyone and not just the inventor.  The sale doesn’t need to be a public sale as a private sales offering also creates a bar.  The date used to determine the offer sales date is when the offer is mailed to the potential buyer.

There is an exception to this rule.  There can be a product which is made from a patented method.  If the product made from the patented method is sold by the patentee it creates an on sale bar, however if it is sold by a third party and not the patentee it does not create an on sale bar.

Reduction to Practice (RTP):

An invention is considered reduced to practice when it is physically built and tested and known to work for its intended purpose.  This can include enabling drawings and other descriptions created enabling the invention.

Experimental Use:

Experimental use is subjective based on the inventor’s intent.  This usually involves perfecting the invention to see if it will work for its intended purpose.  The key here is how much control is retained by the inventor for the experimental use.

Overcoming a 35 U.S.C. § 102(b) rejection:

35 U.S.C. § 102(b) is a statutory bar on patentability and can not be overcome by a 37 C.F.R. 1.131 affidavit like some of the other 35 U.S.C. 102 rejections.  A 35 U.S.C. § 102(b) rejection can be overcome through the following actions however: Arguing the claims are distinguishable from the prior art; Amending the claims to avoid the subject matter in the 35 U.S.C. 102(b) rejection; Claiming experimental use; Claiming an earlier filing date through application data sheet with specific reference perfecting priority.

A 35 U.S.C. § 102(b) rejection can also not be overcome by a 35 U.S.C. § 119 foreign filing date.  Unexpected results can not overcome a 35 U.S.C. § 102(b) rejection unless you can show that the reference does not possess a characteristic of the applicants claimed invention through evidence.  Again, can not use a rule 31 37 C.F.R. § 1.131 affidavit to swear behind the reference.

Information on the publication of patents which can help for 35 U.S.C. § 102(b) rejections:

US patents are generally published 18 months from the earliest filing date sought except when: applications are no longer pending, applications are subject to secrecy order, the application is a provisional application.  If the applicant certifies that he has not and will not conduct a foreign filing of the application he can forgo the 18 month publication expectation.

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2.5 – 35 U.S.C. § 102(c)

35 USC 102c Featured Image

 

“A person shall be entitled to a patent unless he has abandoned the invention.”

35 U.S.C. § 102(c) is very straight forward and simple.  Basically a person can obtain a patent on an invention conditional on the fact that the invention is not abandoned.  The inventor must have intended to abandon the invention to invoke this rejection.  He/She must intend to dedicate their invention to the public.  A delay in the application process is insufficient proof to label an invention abandoned for a 35 U.S.C. § 102(c) rejection.

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2.6 – 35 U.S.C. § 102(d)

35 USC 102d Featured Image

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

In summary, 35 U.S.C. § 102(d) states that one cannot file a foreign application 12 months or more before a US patents filing date and have it issue as a patent in the USA.

All of the four conditions of 35 U.S.C. § 102(d) must be met to invoke a rejection.  These include:

1.  Filed as a US application by the same applicant or their legal assigns.

2.  More than one year before the effective filing date of the US application.

3.  Issued as a patent or inventor’s certificate before the fling of an application in the US. [The patent rights must be enforceable (foreign application must be progressed to an enforceable patent).]

4.  The patents must involve the same invention.

Like 35 U.S.C. § 102(b), 102(d) is also a statutory bar if all of the conditions are met.

How to overcome a 35 U.S.C. § 102(d) rejection?

Since 35 U.S.C. § 102(d) is a statutory bar this rejection cannot be overcome through swearing behind with a 37 C.F.R. § 1.131 affidavit.  However, one can argue for patentabily distinct claims in view of the prior art, amend the claims to make them non-interfering with the prior art, or claim a earlier filing date through perfecting priority to a co-pending application.

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2.7 – 35 U.S.C. § 102(e)

35 USC 102e Featured Image

 

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

 

To summarize 35 U.S.C. § 102(e), the invention can’t be described in another US application published before the effective filing date of the new application.  International applications are included if filed under 35 U.S.C. § 351(a) are published in English and designate the USA.  Or, the application can not be part of another granted patent by another in the USA prior to the effective filing date of the new application.

Important facts to remember for 35 U.S.C. § 102(e) rejections:

Earlier filed applications do not have to claim but only disclose the subject matter.  US patents can claim the benefit of an international application filing date if the international application: was filed on or after November 29th, 2000; designated the U.S.; is published in English.  US application publications are prior art to the applicant’s new application.  International application filing dates can be included if the 3 conditions from the previous item are met.  US patent applications claiming priority to a foreign patent can be used as prior art at the effective date of the string of priority.  If an international application is included in the string it must meet the 3 conditions of the previous item.

Overcoming a 35 U.S.C. § 102(e) rejection:

35 U.S.C. § 102(e) is not a statutory bar like 35 U.S.C. § 102(b) and (d) as such 37 C.F.R. § 1.131 affidavit swearing back before the prior art can be used.  Perfecting priority to other co-pending applications can be utilized to achieve an earlier filing date than the prior art reference.  Also, if the reference is the inventors own work one can use 37 C.F.R. § 1.132 affidavit to overcome the rejection.  Finally, as in most of the other 102 rejections, one can argue that the claims are patentabily distinguishable from the prior art or amend the claims to not interfere with the prior art.

 

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2.8 – 35 U.S.C. § 102(f)

35 USC 102f Featured Image

 

“A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented.”

This is pretty simple, the inventor on the application must be the true inventor of the application.

To overcome a 35 U.S.C. § 102(f) rejection one can use derivation.  In order to use derivation successfully you must show proof that the entire invention was previously conceived by another.  A small improvement from a previous invention can dissolve the derivation argument as it must be the entire invention.

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2.9 – 35 U.S.C. § 102(g)

35 USC 102g Featured Image

 

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

 Basically, the invention can not be invented by another before the invention sought to be patented.  This includes not being the looser in an interference proceeding.  The winner of the interference proceeding can not abandon, suppress or conceal his invention.  Diligence must be considered in addition to conception date and reduction to practice.

Information on prior invention:

The first to reduce to practice wins unless the second to reduce to practice can prove earlier conception and diligence from the time prior to the first’s conception to subsequent reduction to practice or filing.  Reduction to practice is not simply publication.

Rule 31 can be used to swear back prior art referenced under 35 U.S.C. § 102(g).

 

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2.10 – 35 U.S.C. § 103

Subsection 103 of 35 U.S.C. contains 3 important paragraphs which are used in patent law.  A rejection based on 35 U.S.C. is an obviousness type rejection and not anticipation as in 35 U.S.C. 102.  An obviousness type rejection does not have to have prior art which teaches each and every aspect as in a 102 anticipation rejection.

The three paragraphs of 35 U.S.C. § 103 are:

1st Paragraph: Patent may not be obtained even though the invention is not identically disclosed or described as in 35 U.S.C. § 102 if the new invention would have been obvious as a whole to one of ordinary skill in the art to which the subject matter pertains.

2nd Paragraph: Non-obviousness requirements for biotechnology.

3rd Paragraph: Common ownership, joint research agreements and obviousness.

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2.11 – 35 U.S.C. § 103 1st Paragraph

35 usc 103a featured

 

“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”

 

To summarize, if the invention as a whole would have been obvious to one of ordinary skill in the art in view of the prior art the invention is not patentable.

Important facts for 35 U.S.C. § 103(a) rejections:

35 U.S.C. § 102(e,f and g) items cannot be used as a reference for a 35 U.S.C. § 103(a) obviousness rejection if they are owned or assigned to the same entity at the time the invention was made.

When combining references, there must be motivation to combine the references but this motivation doesn’t have to be explicit.  The reason for combining the references can be different than true reason the reference combination works to reject the application.

The invention must be considered as a whole and not on an element by element view.

For objective considerations there should be affidavits or declarations comprising evidence of: unexpected results, failure of others, long felt need, commercial success, skepticism of experts and copying others.

To overcome a 35 U.S.C. § 103 1st Paragraph rejection:

 In order to overcome a rejection based on 35 U.S.C. § 103 1st Paragraph, one can try to disqualify the prior art similar to the tactics used in 35 U.S.C. § 102 rejections.  Some examples would be swearing behind or amending the claims.  However, unlike a 35 U.S.C. § 102 rejection, these rejections do not have to have prior art that teaches each and every aspect of the claimed invention.  As the title states these are obvious type rejections and not anticipation rejections.  In addition to disqualifying the prior art, one can also argue for non-obviousness through providing evidence of non-obviousness.

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2.12 – 35 U.S.C. § 103 2nd Paragraph

35 USC 103b featured

“(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-
(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
(2) A patent issued on a process under paragraph (1)-
(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
(3) For purposes of paragraph (1), the term “biotechnological process” means-
(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-
(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).”

 

To summarize, for biotechnology processes using or resulting in a composition of matter, it will be considered nonobvious if it is: Novel under 35 U.S.C. § 102, nonobvious under 35 U.S.C. § 103(a), the claims to the process and composition of matter are contained in same application or in sperate applications with the same effective filing date.  Also, if the composition of matter and process (at the time the invention is made) are owned by the same entity or subject to assignment to the same entity.  A patent for a process under (1) shall contain claims to the composition of matter used in or made by that process.  Or it shall be set to expire on the same date as the other patent.  For the purposes of the above items, a biotechnological process means a process to genetically alter or inducing a single or multiple cell organism to express exogenous nucleotide sequence or inhibit, eliminate, augment or alter expression of endogenous nucleotide sequence or express specific physiological characteristic not naturally associated with the organism.  It can also be a cell fusion procedure which yield cell line that expresses specific protein.  Finally, it can also be a method of using a product produced by a process of (A) or (B) or a sub combination of (A) and (B).

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2.13 – 35 U.S.C. § 103 3rd Paragraph

35 usc 103c featured

 

“(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.”

 

To summarize, the claimed invention is non obvious if the claimed subject matter is made, owned or subject to assignment to the same person at the time the invention was made.  Even if created by another inventions are considered owned by the same person or subject to assignment to the same person if the invention was may by or on behalf of a joint research agreement which was in effect before the invention was made, is a result of this JRA and the application lists or is amended to list the parties of the JRA.  A JRA is a written contract, grant or cooperative agreement by two or more persons/entities for the performance of experiment, developmental or research in the field of the claimed invention.

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2.14 – 35 U.S.C. § 112

35 U.S.C. § 112 General

Section 112 of 35 U.S.C. contains the disclosure requirements for patent applications.  Of this section there are three major paragraphs: the first, second and sixth paragraph.

The first paragraph deals with the written description of the invention and how it is to be communicated to the public.  Additionally, the idea of a required best mode is also discussed in the 1st paragraph.

The second paragraph sets out two separate requirements for definitiveness.  According to this paragraph, the applicant must set forth what they regard as their own invention and distinctly and particularly point out this subject matter through claim language.

The sixth paragraph sets out the fundamentals of a means or step plus function.  An element in a claim for a combination may be expressed as a means or step for performing a specified function without recital of the structure, material or acts in support thereof and such a claim will be construed to cover the corresponding structure, material and acts and equivalents thereof.

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2.15 – 35 U.S.C. § 112 1st Paragraph

35 U.S.C. § 112 1st Paragraph

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such a full clear, concise, and exact terms so to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

 

To summarize, the specification of the patent needs to contain a written description of the invention and the manner of making and using it in such full clear and concise language that one who is skilled in the art pertaining to the invention would be able to make and use the invention.  This must include the best mode contemplated by the inventor.

1) Written Description Requirement:

The written description requirement is intended to make clear what the applicant invented. Full disclosure is required.  The written description should be clear and concise with exact terms.

No New Matter:
“New matter” cannot be added by amendment to an applicant’s disclosure after its filing per 35 U.S.C. § 132 & 251.  New matter arises in information of an amendment to the claims, specification and drawings which are not included in the original disclosure.  It is not considered new matter if you simply reword a sentence  make explicit material incorporated by reference or make an inherent function explicit.

Specific Issues:

1) Amendment affecting a claim through the addition of material in an application:  Can be an amendment to the specification or the claims.  An amendment to correct an obvious error does not constitute new matter if one skilled in the art would recognize the error and the appropriate correction.  If there is a new claim being added it must be fully supported by the written description as originally filed.

2) Reliance on filing date of patent:  If claiming priority to earlier application, the subject matter must meet 35 U.S.C. § 112 1st paragraph requirement.  If claiming foreign priority, the subject matter must meet 35 U.S.C. § 112 1st paragraph requirements.

3) Changes to the scope of the claims: If the claims are narrowed or broadened care must be taken to ensure there is not a 35 U.S.C. § 112 error resulting from the change as this often happens.
This includes the altering of numeric ranges in a claim.

2) Enablement Requirement:

The specification must describe to one skilled in the art how to make and use the invention.  This is at the time the invention is filed.  If the enablement requirement is not met, the application ma be rejected under 35 U.S.C. § 112 for lack of enablement.

For a lack of enablement, one of the following conditions must be met:

1) Undue experimentation is required:  An individual skilled in the art should not have to conduct undue experimentation to make and use the invention.  Reduction to practice is not required if the disclosure enables one of ordinary skill in the art to make/use the invention without undue experimentation.  Complex experimentation is not necessarily undue experimentation if it is common in the art to which the invention applies.  This is as long as all the information necessary to perform the complex information is disclosed and one of reasonable skill in the art can make/use the invention.  Factors considered for determining if necessary experimentation is undue include: breadth of the claims, nature of the invention, prior art stat and level of ordinary skill.

2) Broadness of claims:  A specific reference in the specification to a feature of the invention which is crucial to its make/use which is not included in the claims can result in lack of enablement.  This makes the claims too broad.

3) Utility requirement is not met:  If a claim is not useful or inoperative it does not meet the enablement requirement due to lack of utility.  A claim can not be useful if it is inoperative or doesn’t provide a benefit of some sort.  The specification can not show how to use a useless invention.

3) Best Mode Requirement:

Since the act of patenting is a disclosure of a secret for a time limited monopoly on the secret, the law wants the patentee to disclose the best mode to use the invention.  This ensures that the applicant can not partially disclose his invention and receive a federal monopoly on the invention yet still retain the best way to use the invention as a trade secret.  Otherwise the patentee could disclose a less than desirable mode of usage in exchange for the monopoly yet still keep the best mode a secret for himself.  Examiner assumes the best mode is disclosed unless evidence proving other wise is discovered.  Evidence of concealment is the only relevant evidence.

Disclosure of less than the best mode does not invalidate a parent as long as the inventor as the time of the application did not know of the better method or did not recognize its superiority.

The best mode requirement is based on the time the application is filed.  A later finding of a better mode does not require disclosure.  The later finding of other superior modes also does not require disclosure.  This is only required at the time of filing the patent.

The disclosure does not have to point out the best mode as long as it is contained in the disclosure.  This can be subjective based on what outcome is wanted.  Updating of best mode after filing is not required even if perfecting priority to a previous application.

Failure to disclose best mode in the original application can not be corrected through an amendment.

A specific example is not required.  A preferred range of parameters could be good enough.

America Invents Act Update – Best Mode

Section 15 of the America invents act amended 35 USC 282 to provide that “the failure to disclose the best mode shall not be basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.”  Although best mode is still required per 35 U.S.C. § 112(1) it can not be the basis for invalidating a granted patent.
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2.16 – 35 U.S.C. § 112 2nd Paragraph

35 USC 112 2nd Paragraph

“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

Basically in the application the applicant must use claims to define what was invented.  These claims must distinctly define and particularly point out the boundaries of what the applicant seeks to obtain patent protection on.

1) Terminology of claims:

Any wording and terms can be used to define the invention through the claims.  However, the terms must not use a meaning which is contrary to the accepted meanings of those terms in the field of the art of the patent.

Relative terms in claims are factual and subjective and not objective.  The specification should define the exact meaning of these terms to avoid any question as to meaning.  Can include: essentially, similar, relatively, type, substantially, about, etc…

Trademarks and/or trade names can be used in the claim language under certain circumstances.  They are considered indefinite if they are used as limitation as they are intended to be used as a description of material.  Their usage can cause confusion as to the scope of the claims.  These are usually used to define the source of goods and not the goods themselves.

Claims should be self-contained and shouldn’t reference tables or figures unless necessary.

Markush Groups:  These types of claims limit the claim to a member of a selected group of individual elements.  They are okay to use in claims and an individual can select from any of the elements of the markush group.  However, if a markush group is used the individual is limited to only those items listed.  This is closed-ended and creates definiteness.  The syntax of a markush group reads with the word “consisting” coupled with the “and” conjunction.  An example is “shape consisting of a circule, square and rectangle.”

Omnibus Claims: These claims are indefinite as they do not adequately define the protection sought from the application for patent.  As such they are not allowed in US patents.  Usually read as “a device substantially as shown and described”.

2) Consistency:

If there are any inconsistencies between the claims and the specification then the disclosure does not particularly point out and distinctly claim the invention.  This should be fixed if possible.  See reference MPEP § 2173.03.

3) Breadth of Scope:

The breadth of the scope of the claims must be clearly defined as stated in 35 U.S.C. § 112 2nd paragraph.

Numerical range statements in claims usually do not raise definiteness issues except if there are narrow and broader ranges in the same claim or open ended numerical ranges.  For example a preferred range with a non preferred range and the numerical range with statement “at least”.

4) Antecedent Basis or lack of:

This is referencing to a term which is not previously defined in the claim or specification.  It creates uncertainty as to what is being referred to.  This results in indefiniteness if one of ordinary skill in the art can not reasonably understand what is meant.

5) Product and Process:

This is when there is a claim for a product defined by a process used to make it.  These are not indefinite unless both the product and process are indefinite.  If there is a claim to a process but no steps are included to carry out the process it is usually held as indefinite.

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2.17 – 35 U.S.C. § 112 6th Paragraph

35 USC 112 6th Paragraph

“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Basically, a claim for a combination can be expressed as a “means” or “step for” performing the specified function with out reciting the details of the structure, material, acts which support the means or step for.  The claims which use this will be construed to cover the structure, material and acts or their equivalents as described in the specification.

Means or Step Plus Function:

Usage of the terms “means” or “means for” does not always mean that the means or step for function rules apply.  This is determined by whether the element in the claim is set forth by the function that is performed rather than the specific structure, material or acts that perform the function.  This can be in part.

The initial burden is on the examiner to find a reference containing both the same function, supporting structure, supporting materials and supporting acts as the applicants claim.