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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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2.6 – 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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2.15 – 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.