35 USC 102(a)

by patentbar on November 27, 2007 · 7 comments

in 35 USC 102(a), MPEP 2100

35 USC. 102(a)A person shall be entitled to a patent unless (a) 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.

Note: 102(a) applies if the invention was known or used before the date of invention (not the filing date) by a 3rd party. Overseas Activities – activities in NAFTA countries (12/8/93) and WTO countries (1/1/96) may be introduced to prove earlier conception and RTP.

Overcoming a 102(a) Rejection

  • Prove an earlier date of invention (Rule 31) – 1) Swear behind a prior art reference; 2) Reduction to practice before the application filing date; or 3) Conception and diligence before the prior art reference until RTP
  • Showing the references’ disclosure was derived from applicant – use disclaiming affidavits (“an affidavit or declaration under 37 CFR 1.131 antedating the reference”)
  • Amend claims, arguing to examiner; of an earlier patent application [provisional, foreign (§119 is ok to establish earlier date of invention), divisional] – “a reply which perfects a claim of priority under 35 U.S.C. 119 (a)-(e) or 35 U.S.C. 120”
  • Filing an application date sheet with specific reference to prior application

{ 7 comments… read them below or add one }

1 102(a)No Gravatar January 5, 2010 at 11:49 pm

I presume that it is not barred under 102(a) for an inventor to publish his invention before the filing date of the patent application.

The statute says invention must not patented or described in a printed publication in this or a foreign country, BEFORE the invention thereof by the applicant for patent. So if the applicant describes his invention AFTER the invention thereof, it would be all right. Right?

Reply

2 DrKyeNo Gravatar January 12, 2010 at 1:04 am

Yes, you are correct. However, if you are planning to seek protection of your invention outside of the US, this is not the best plan of action since most countries have an absolute novelty requirement when filing for a patent. Thus, if your invention has been publicly disclosed in the US, you have forfeited your right to a patent in most other countries (except Australia and, I believe, Canada).

Reply

3 Marc AvilaNo Gravatar May 14, 2010 at 12:28 pm

By “Rule 31″ in the “Overcoming a 102(a) Rejection” section, do you mean Rule § 1.131 Affidavit or declaration of prior invention?

Reply

4 LMNo Gravatar March 19, 2011 at 3:57 am

Difference between 102 (a) and 102 (e) for prior art – which could be a bar –

102(a) = publication is BEFORE your application – publication date is a prior art date

102(e) = publication is AFTER your application – effective fiing date is a prior art date

For US applications

Reply

5 LMNo Gravatar March 19, 2011 at 4:20 am

Snapshot of 102

102(a) = anything BEFORE filing of US application

102(b) = ONE YEAR concept – before one year all that matters

102(c) = abandoned

102(d) = TWO applicaitons – Foreign and US

102(e) = patent / publication of another AFTER filing US application

102(f) f = fraud

102(g) = gone – invention by others before your invention in US

Reply

6 mimiNo Gravatar November 1, 2012 at 12:15 am

102(e) is not limeted only to the case that the prior art is patented/publicated after filing of your application.

102(e) says just the patent/publication is filed prior to thte filing of your application and should be patented/publicated after that.

Reply

7 mimiNo Gravatar November 1, 2012 at 2:30 am

sorry for error, published! ;-)

Reply

Leave a Comment

Previous post:

Next post: