35 USC 102(b) “Statutory Bar” November 27, 2007
Posted by patentbar in 35 USC 102(b), MPEP 2100.trackback
35 USC 102(b) – “A person shall be entitled to a patent unless (b) 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.”
102(b) aka “more than one year statutory bar” – To reject claims under §102(b) the examiner can cite anyone’s prior art or activity by a 3rd party or the applicant. This includes any patent, any printed publication, but only public use or on sale in the US more than one year before the US application date. This creates an absolute bar (dates of invention are irrelevant).
Filing Date
- The filing date is the date the application is filed with the PTO
- Continuation (§120) or Divisional (§121) applications have an earlier date if:
- Specification contains a reference to old application
- Old application supports new claims (§112)
- New application is filed before old application issues or is abandoned
- Provisional application – applicant has up to 12 months to file a patent application that depends on the provisional (§111(b)). If the application is filed within the 12 month period, the application can claim priority to the provisional’s filing date.
- Foreign – an earlier filed foreign application cannot be used to overcome a §102(b) bar. Only entitled to §119 foreign filing date if during pendency of US application:
- Foreign application is identified (application #, country filed, filing date)
- Same inventors
- Same invention
- Foreign application must satisfy, via §112, new US claims
Patents as Prior Art
· US = date of issuance (not filing or publication)
· Foreign = date the rights become enforceable (MPEP §2126.01)
· Can’t be secret or private
Printed Publication – A reference is a “printed publication” if one of ordinary skill in the art can locate it with reasonable diligence. Its availability as prior art under 102(b) depends on proof of when the reference was “published” or became publicly available.
· Must be publicly accessible when it reaches the public
· Catalogued and indexed in a library
· Confidential disclosures are not printed publications
· Published patent application is a printed publication
Public Use
· Only in US
· Can be a public and hidden use (bra)
· Cannot be a secret use (inventor maintains control)
On Sale – “On sale” includes inventions that were sold, offered for sale, or tested (offered for sale and ready for patenting) in the US
- Offer – need not be accepted; details about product do not have to be disclosed; offer can be by anyone; sale need not be public; an offer to assign rights to patent is not a offer; date is when offer is mailed
- Exception – Gore where a patented method is kept secret, but there is a sale of the product from the method, such a sale is a bar if made by the patentee, but not a bar if the sale is made by a 3rd party.
- Ready for Patenting (RTP) – invention is physically built and tested (known to work for intended purpose) or enabling drawings or other descriptions
- Experimental Use – (subjective intent of inventor) perfecting invention to see if it will work for intended purpose; extent of control is a key factor
- Note - The public sale bar applies even if the invention is misappropriated.
Overcoming a §102(b) rejection – A prior art rejection under 35 U.S.C. 102(b) is a statutory bar to patentability; a 37 CFR 1.131 affidavit cannot be used to establish prior invention when the rejection is based on a statutory bar. A 102(b) bar can be overcome by:
- Amending the claims
- Arguing claims are distinguishable from prior art
- Experimental use
- Earlier filing date (provisional, continuation, divisional);
- Application data sheet [same as 102(a)]
A 102(b) bar cannot be overcome by:
- A §119 foreign filing date cannot be used to avoid a 102(b) bar
- The 102(b) rejection cannot be overcome by evidence of unexpected results. It can be overcome by evidence that the product in the reference does not necessarily or inherently possess a characteristic of the applicant’s claimed product.
NEW AIPA §122(b) – US patent applications shall be published 18 months from the earliest filing date sought; except: Applications no longer pending; subject to secrecy; provisionals; if applicant certifies that the invention disclosed has not and will not be the subject of a foreign patent application
Note: Cannot swear behind a §102(b) reference.
[...] the US, it’s called a statutory bar – and it is set forth in section 102(b) of the patent statute. To solve this issue and avoid loss [...]
Can somebady explain the differences between 102 (a) and 102 (b)? It is confusing to me…
In Overcoming a 102(a) Rejection: Prove an earlier date of invention (Rule 31) – 1) Swear behind a prior art reference. What does mean by “swear behind a prior art reference”?
Thanks, Alex
The difference between 102 (a) and 102 (b) comes down to who triggers the statutory bar.
In 102 (a), this is triggered by a 3RD PARTY placing the invention in the possession of the public before the inventor invents the subject matter to be patented. Such an event is considered lack of novelty.
In 102 (b), the bar is triggered by the INVENTOR placing the invention in the possession of the public more than one year prior to the patent application. Such an event is considered a loss of right, since it was the inventor who forfeited their right to patent either by placing it in the public’s possession themselves, or letting it slip into the hands of a 3rd party who does it for them.
Not really correct. A 102(b) rejection arises when ANYONE including the inventor discloses the invention (or publicly uses or offers to sell in US) more than one year before the applicant’s effective filing date.
102(b) is known as a “statutory bar” to patent rights because it prevents the inventor from making his/her rights exclusive when they have waited more than a year after disclosing the invention to the public in some way before filing a patent application.
Prior art under 102(a) would be where the invention was known or used by OTHERS in the US, or patented or described in a printed publication in the US or a foreign country, before the invention thereof by the applicant for a patent. However, if this disclosure happened more than one year prior to the applicant’s filing date, the examiner will still use a 102(b) rejection.
Swearing behind a reference means that you provide a 37 CFR 1.131 affidavit that shows that you were the first to invent and either the first to reduce the invention to practice or, if you were the first to invent, but the reference has an effective priority date before your invention was reduced to practice, the affidavit must also show that you used due diligence from the time just prior to the reference’s effective date up to your actual or constructive (the filing of the application) reduction to practice.
Due diligence is usually characterized by affirmative reasons for the delay in filing or by acceptable excuses.