35 USC 102(b) "Statutory Bar"

by patentbar on November 27, 2007 · 14 comments

in 35 USC 102(b), MPEP 2100

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.

1 AlexNo Gravatar June 29, 2009 at 12:32 pm

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

2 RyanNo Gravatar August 4, 2009 at 8:09 pm

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.

3 BrettNo Gravatar October 6, 2009 at 2:12 pm

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.

4 BrettNo Gravatar October 6, 2009 at 2:24 pm

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.

5 Jerome ShaunnesseyNo Gravatar July 7, 2010 at 4:37 pm

My patent is currently under Ex Parte Reexamination
and one of my claims has been rejected as obvious
under 103(a) and a statuatory bar under 102(b) to
filing a Affidavit of Prior inventorship under 37 CFR

My ‘Affidavit’ states that the invention of my patent;
occured on September 12, 1981. 11 years before
the dates of the prior art references.

What the ‘Statuatory Bar’ actually does is negates
a ‘disclosure document’ and the United States
First to Invent system. It penalizes the inventor
for not filing for a patent soon after he completes
his invention.

Such a ‘Bar’ favors corporations and discriminates
against the independent inventor, and completely
negates the value of a ‘disclosure document’

The ‘Bar’ is absurd. because saying that something
is obvious after it was proven to been invented
before one found it to be obvious

America has already went to the First to File

6 PatfieldNo Gravatar July 15, 2011 at 10:20 am

(E) Perfecting a claim to priority under 35 U.S.C. 119(a)-(d) within the time period set in 37 CFR 1.55(a)(1) or filing a grantable petition under 37 CFR 1.55(c). See MPEP § 201.13. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(a)(3)) and the examiner has established that the priority document satisfies the enablement and description requirements of 35 U.S.C. 112, first paragraph; or

7 Subhash GargNo Gravatar April 4, 2012 at 11:00 pm

What is meant by the tern “use”? Suppose my invention (or a product with my invention hidden inside) is physically located and visible in a public place, without being identified as new, and said invention or product is not in operation. Does that mean public “use”?

For example, suppose I have an engine on display (but without terms of sale() in a trade show, and it contains a spark plug invention. If the engine is never turned on, and therefore the spark plug is never used, can I claim that there was no public use?

8 Mac_AttyNo Gravatar June 13, 2012 at 12:14 am

Subhash… I believe “public use” in this situation has to more to do with control. For example, the engine display with the novel spark plug: if left unprotected and out in the open, such that any 3rd party (security guard, etc. who isn’t under the control of the inventor) could have access to the engine and novel spark plug without the inventor’s control and/or without being subject to a non-disclosure agreement, would make the the engine display a public use and/or disclosure.

9 subzeroNo Gravatar June 20, 2012 at 5:32 pm

Can someone help me clarify this question pertaining to 102(b) public use and offer for sale one year bar?

If someone had an offer for sale on May 4th, 2004 and the date is May 3rd, 2005? Would the person’s invention be barred at midnight May 3rd, 2005 or midnight May 4th, 2005?

10 passedatlastNo Gravatar June 20, 2012 at 8:00 pm

subzero: The invention would be barred at 12:00am on May 4 (i.e., one minute after 11:59pm on May 3).

11 patentNo Gravatar March 8, 2014 at 7:04 am

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12 pass exam by reading mpep and supplementalsNo Gravatar March 9, 2014 at 1:58 pm

and SNQs on USPTO

13 BarbaraNo Gravatar April 22, 2016 at 2:40 pm

I designed a specialty bag for a specific mom-and-pop retail store. They purchased several and put it in their store to be sold. One year has not passed. Will a patent be given to me as the inventor and will it hold up in court? I’ve search and have found no other bag designed like mine.

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