By Dennis Crouch
Consider the text of new 35 U.S.C. §102.
(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed 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 in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
35 U.S.C. §103
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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Notes of Import:
- Prior art is now keyed to the effective filing date of the application-in-question and – except for grace period and derivation purposes – dates of conception and reduction to practice are no longer relevant.
- The fact that someone else invented your idea first (or something similar to your idea) is irrelevant except in the limited case of a derivation proceeding. Rather, what matters in the general case is whether that other party created prior art. (Prior commercial users will have limited prior user rights.)
- On sale and public use activities are no longer limited to activities within the US. Rather, those elements can be proven with prior art arising from any region of the world.
- The USPTO has interpreted "on sale" activity of 102(a)(1) to be limited to public sales or public offers for sale. That interpretation eventually be challenged in court, though the challenge will likely take several years. That shift is a change from our prior understanding of on sale activity.
- Under the 102(b) grace period, the law indicates that pre-filing disclosures "of the claimed invention" by the patent applicant will not serve as prior art against the inventor own later-filed patent as long as the application is filed within one year. Despite that "claimed invention" language, the USPTO has stated that the safe-harbor will work to disqualify all inventor-disclosed subject matter, even if the disclosure only suggests portions of the invention or motivations behind the invention. Of course, care should be taken with a publish-early strategy because that publication will likely negate the possibility of non-US patent rights covering the subject matter disclosed.
- A prior-filed US patent application will continue to serve as prior art once it is either published or patented and will have a prior art date of its earliest priority filing date that includes the relevant disclosure. Foreign applications will only count as prior art as of their publication date unless versions of those applications are filed in the US. Thus, an ordinary published Japanese patent application will be considered prior art in the US as of its publication date. However, if a US application is filed that claims priority to that Japanese application then the US application (once it publishes) will be considered prior art as of the date that the Japanese application was filed.
- Large companies who file many patent applications receive additional relief from their own prior art under 102(b)(2)(C) and 102(c). Basically, a company's prior filed patent application will not count as prior art (for any reason) against the company's later-filed application so long as the prior application has not published or issued by the filing-date of the later application. Further, if the later-filed application was developed as part of a joint research agreement then the law will negate the prior art status of prior filed applications of any of the parties to the joint research agreement (so long as the prior applications were unpublished as of the filing-date of the later-application).