35 USC 102(g)"Prior Invention"

by patentbar on November 27, 2007 · 2 comments

in 35 USC 102(g), MPEP 2100

35 USC 102(g) “A person shall be entitled to a patent unless (g)(1)during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

Prior Invention

  • The first to reduce to practice (RTP) wins unless 2nd to RTP can prove earlier conception AND diligence from time prior to first’s conception to subsequent RTP or filing
  • Publications are not constructive RTP
  • Rule 131 can be used to swear behind prior art

{ 2 comments… read them below or add one }

1 LMNo Gravatar March 19, 2011 at 3:25 am

key to remember:

102 (g)

‘g’ for GONE from your hand – if other invented before U

= competition between YOU and ANOTHER

= who invented first

Reply

2 SENo Gravatar March 16, 2012 at 2:40 pm

There is a mistake:
Rule 131 CANNOT be used to swear behind 102g prior art. It can only be used to overcome 102a and 102e.

However, when the subject matter relied on is also available under 35 U.S.C. 102(g), a 37 CFR 1.131 affidavit or declaration cannot be used to overcome it. In re Bass, 474 F.2d 1276, 177 USPQ 178 (CCPA 1973). This is because subject matter which is available under 35 U.S.C. 102(g) by definition must have been made before the applicant made his or her invention. By contrast, references under 35 U.S.C. 102(a) and (e), for example, merely establish a presumption that their subject matter was made before applicant’s invention date. It is this presumption which may be rebutted by evidence submitted under 37 CFR 1.131.

Reply

Leave a Comment

Previous post:

Next post: