One of the most common problems for applications is 35 U.S.C. §102, which sets forth the doctrine of anticipation by requiring novelty of invention. Essentially, §102 requires the patent applicant to demonstrate that the invention is new. In essence, in order for a claimed invention to violate this “newness” requirement it must be exactly identical to the prior art. In order to understand the requirement of section 102, it will be helpful to explore the context of anticipation in detail. A claim is said to be “anticipated” if comparison of the claimed invention with a prior art reference reveals that each and every element in the claim is under attack is how, described, organized, functioning in substantially the same manner as in prior art.
Anticipation is perhaps most easily understood as the converse of infringement: “That which will infringe, if later, will anticipate, if earlier.” So one way to look at whether your invention is new, as is required under the meaning of §102, is to ask whether your invention would infringe another patent already issued. In the situation where the reference is not a patent but is a printed publication ask whether your invention would infringe if the printed publication were an issued patent instead of just a printed publication.
The standard of anticipation is a rigorous one requiring that every element of the claimed invention as arranged in claim be disclosed either specifically or inherently as a prior art reference. To be sure every element of the challenged claim need not be expressly delineated, in a single prior art reference but may be inherently disclosed by a prior art if “ the prior art necessarily functions in accordance with the limitations of the challenged claims.”
The American Invent Act is responsible for making change, i.e. from first to invent to first to file. So-called pre-AIA novelty law (i.e., the law applied for applications filed on or before March 15, 2013, or applications with all claims having priority on or before March 15, 2013) is rather peculiar at first glance. Not all references, knowledge or events that demonstrate an invention is “old” or already known can be used by patent examiners to reject a patent claim. Before we go too far down this path let’s set some definitive rules:
- If the invention in question was described in the patent issued anywhere in the world prior to the patent applicant inventing it, that no patent can be obtained.
- If the invention in question was described in printed publication published anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
- If the invention is publicly known in the U.S. but not necessarily patented or published, prior to the patent applicant inventing it, then no patent can be obtained.
Addition to the rules
- If the invention in question was described in the patent issued anywhere in the world more than 12 months prior to the US application being filed, then no patent can be obtained.
- If the invention in question was described in a printed publication published anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
- If the invention in question was publicly used in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
- If the device, machine or compound in question was offered for sale in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
American Invent Act section 102
One of the biggest changes to the U.S. patent law brought about by AIA relates to the move from “first to invent” to “first to file”. A pure first to file system is one which demands absolute novelity in order to obtain patent. A pure first to file system is one which says that the sale , use, distribution of the service related to the invention prior to the filing of the patent application no patent can be obtained. This is not exactly what US system mandates.
Inventors should start with the presumption that if there has been a disclosure of the invention prior to filing a patent application in the U.S. no patent can be obtained. However, if the disclosure of the invention was made by the inventor and occurs within 12 months of the filing of a patent application in the U.S. the disclosure can be removed as prior art. If the disclosure is by someone other than the inventor and that other, third party did not obtain the invention information from the inventor it may be impossible (and likely will be impossible) to remove the disclosure as prior art, which is why first to file rules must be interpreted as requiring inventors to file first!
Issues related to grace periods
Under the US first to file system it is true that the inventor will still have a personal grace periods to remove their own disclosures. This personal grace periods says that inventor’s own disclosure or the disclosure of the other who have derived from inventors are not capable of being used as prior art as long as they occurred within 12 months of filing date of a patent application. It is therefore difficult to come up with realistic hypothetical examples where grace period will likely be useful in an AIA universe. Inventors should therefore operate in an assumption that there will be likely be useful in AIA universe.