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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.