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
{ 3 comments… read them below or add one }
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?
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).
By “Rule 31″ in the “Overcoming a 102(a) Rejection” section, do you mean Rule § 1.131 Affidavit or declaration of prior invention?