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 3^rd 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.