35 USC 102

Question 1

Date from pre to new AIA

Answer 1

March 16 2013

Question 2

OLD 102 (a)

Answer 2

1. Applicant Cannot get a patent on something someone else provably invented first.
2. Proof:
   Published documents or patents around the world; or invention was known or used by other in the U.S before your date of invention

Question 3

OLD 102 (b)

Answer 3

Once invention enters the public domain by the inventor or another’s action, the inventor has a 1- year GRACE period within which to decide whether to file a patent application

After 1 year grace, the inventor is barred from filing

Question 4

Public Domain

Answer 4

published documents or patents (from anywhere)

public use or sale (in the US only)

(US filing dates can be used against you)

Question 5

OLD 102 (c)

Answer 5

you cannot get a patent you publicly stated you have given up on

Question 6

OL 102 (d)

Answer 6

Foreign Filing

encourages international filing

must file within ONE year of international filing date

Question 7

OL 102 (e)

Answer 7

You cannot patent something someone else invented first (akin to 102 (a)) if proof of prior invention can be found in:

1. Previously filed and now issued, or published, US application that has a US filing fate before your date of invention;
2. Published PCT Applications filled after 11/29/2000, that designate US and publish in English

Question 8

Old 102 (f)

Answer 8

must disclose what you have invented and what others have contributed

you can only claim what you have invented

must inform of starting point

Question 9

OLD 102 (g)

Answer 9

Basis of Interference

“first to invent”

patent will go to whoever can prove they did it first

senior party: first to reduce invention. not the first to conceive

junior party: first to conceive but 2nd to reduce

Question 10

AIA 102 Section Breakdown

Answer 10

(a) Definition of Prior Art

(b) Exceptions to prior art

(c) definition of common ownership

(d) proper naming of inventors

(e) determining whether an application is subject to first inventor to file

Question 11

AIA 102 (a)(1)

Answer 11

You cannot file a patent application or something that is already provably in the public domain before you file.

Proof can be from anywhere in the world and includes:

1. Patents;
2. Printed Publications;
3. Public use or sale; or
4. Otherwise in the public domain

Question 12

AIA 102 (a)(2)

Answer 12

you cannot file something already filed before you filed

“first to file”

Evidence of prior filing here is only in the form of published or issued US applications, with the prior art date set as the EARLIEST effective filing date (foreign or domestic) of that patented or published application

Question 13

documents that fall under prior art treatment 102(a)(2)

Answer 13

US
- Patents
- US published APPS
- Published PCT

Question 14

AIA 102 (b) (1)

Answer 14

exceptions to AIA 102 (a) (1)
1 year grace period

A. Attribution
B. Beat the date

Question 15

AIA 102 (b)(1)(A)

Answer 15

A disclosure made by the inventor, or a person who obtained the disclosure from the inventor, within one year of the filing date does not qualify as prior art.

Question 16

AIA 102 (b)(1) (B)

Answer 16

If the subject matter of a third party disclosure, made within one year prior to filing was made public by the inventor or someone who obtained it from the inventor before the third party disclosure, cannot be used against you.

who?
- 3rd party
-public by inventor
-someone who obtained it from inventor

Question 17

AIA 102 (b) (2)

Answer 17

exceptions to 101(a)(2)

Already public applications and patents

A. Attribution
B. Beat the Date
C. Common Ownership

Note: these exceptions only apply when you are within the one year grace period

Question 18

AIA 102 (b)(2)(A)

Answer 18

Inventor originated disclosure

a disclosure in a prior filed published or issued US application is NOT prior art if the subject matter was obtained directly or indirectly from the inventor

Question 19

AIA 102 (b)(2)(B)

Answer 19

inventor or inventor originated prior public disclosure

subject matter disclosed in the prior, 3rd party filed published or issued US application is not prior art if it was publicly disclosed, before the effective filing date of the third-party reference, by the inventor or another who had obtained the subject matter, directly or indirectly from the inventor

Question 20

AIA 102(b) (2) (C)

Answer 20

common ownership or obligation of assignment

If the subject matter disclosed, and the claimed invention in the prior filed published or issued application, were commonly owned (or under an obligation of assignment) by the owner of the application currently being examined before the effective filing date thereof

proof of agreement of common ownership before the filing date

Question 21

AIA 102 (c)

Answer 21

common ownership/joint research agreements

1. Claimed invention made by the parties to the agreement and the agreement was in effect before the effective filing date
2. invention resulted from activities within the scope of the agreement; AND
3. application discloses the names of the parties to the agreement

Question 22

AIA 102 (d)

Answer 22

The effective filing date is eh actual filing date of the application unless

i. there is a claim for priority, then priority date is the effective filing date

Question 23

effective filing date

Answer 23

(a) date of actual filing of an application

(b) filing date of earliest application for the patent is entitled to under 35 USC 119, 120, 121, 365.

aka any continuation, foreign, provisional

Question 24

priority date

Answer 24

when a patent claims priority using another filing date of a previously filed application (international or domestic)

if not PRIOR application tied then the priority date of the app is the effective filing date of the app

Question 25

Patented

Answer 25

if claimed invention was patented before the effective filing of the claimed invention it is prior art effective date of patent is the grant date of the patent

Question 26

printed in publication

Answer 26

anything claimed in a patent published app or publication is generally prior art must be descriptive and enabling

Question 27

public use and otherwise available to the public

Answer 27

public is apprised of invention and understands how it works but not always the case can be posters, electronic documents, anything presented in public domain

Question 28

no requirement of by others

Answer 28

NEW LAW to be considered prior art does not need to be done by someone else. can be from the inventor themselves. BUT inventor has 1 year grace period to file

Question 29

Admissions

Answer 29

if you admit it as prior art then you can count as prior art only take admission back if it was only your own work

Question 30

Disclosure

Answer 30

if there is a 3rd party disclosure before your earliest filing and you can predate it with a disclosure of your own it does not count as prior art (ALSO must be within the year or else your own work will be counted against you as well)

Question 31

102 (a) summary

Answer 31

break down of everything that can be considered prior art before your filing date 102(a)(2) filing dates of others before yours

Question 32

102 (b)(2) summary

Answer 32

applies to 102 (a)(2) (A) attribution - you are attributing the disclosure to yourself directly/indirectly (B) Beat the date (C) common ownership

Question 33

what is subjected to old law

Answer 33

any priority dates and subsequent dates that is before march 16 2013 will be subjected ot the old law AFTER march 16 2013 is the new law

Question 34

what happens in cases that have a filing date before and after the change?

Answer 34

you must look at what is being claimed in the later case if one claim includes subject matter that arrived in the case y whatever mechanism if you have a subject matter that arrived in the US case on or after March 16 2013 then ALL claims will be evaluated under new law and are eligible for treatment under old 102(g) agent/attorney MUST saw what law it is under

Question 35

Statutory Bar

Answer 35

are specific requirements that limit an inventor’s ability to obtain a patent can result in an invention becoming ineligible for patent protection if triggered.

Question 36

Non-Statutory Bar

Answer 36

are not explicitly defined by laws but have a significant impact on the patentability and validity of an invention anything known to the public. Not explicit in law BUT can hinder the chance of you obtaining a patent evaluated during patent examination and legal proceedings to determine the validity and patentability of an invention "assess"

Question 37

what is needed for invention

Answer 37

conception and reduction conception: communicate idea to someone of ordinary skill reduction: actually produce invention or file an application

Question 38

OLD LAW 102 structure

Answer 38

(a) novelty requirement. knowledge and use only in U.S (b) 1 year grace period (c) abandonment (d) statutory bar for foreign filing (e) 102(e) filing date (f) only inventor gets the patent (g) interference

Question 39

International application

Answer 39

if an application is filed though the PCT

Question 40

37 CFR 1.130

Answer 40

affidavits or declarations to overcome prior art rejections