This is an extract of our Prior Art Under §102 document, which we sell as part of our Patent Law Outlines collection written by the top tier of Harvard Law School students.
The following is a more accessble plain text extract of the PDF sample above, taken from our Patent Law Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:
Prior Art under SS102 SO: going to go through the OLD RULE and the NEW RULE.
? ** KNOW BOTH: new rule came into effect last year. With patents filed prior to that date of effectiveness, old rule applies. 19 years of patents out there that use the old rule.
? Structurally different, not THAT different substantively.
? NOTE: Not important on the exam which filing date is the old vs. new rule. Better, on the issue spotter, "Prior art: Under the old rule.... Under the new rule..." OLD RULE SS 102
? ?? ? 102(a): o "new" in comparison to the date of invention. o Geographic limitation: Four different types of prior art in this statute. Two apply to US, two in US or Global.
? US: (1) Known or (2) Used
? US/Global: (3) Patented or (4) Described in printed publication
? (Logic to the territorial restrictions: if someone is using something in Siberia or India or something, don't want to restrict patenting in US if not patented/published and all but impossible to know about...)
? 102(b): Statutory Bar, one year prior to filing o Patents and printed publication (global) o Previously sold or in public use in this country
? "On Sale" bar - specific to 102(b). Territorial limitation, and critical date of 1 year prior to filing o Critical Date: Inventor has 1 year after disclosure to the public to file a patent.
? 102(c): Abandoned - Ignore.
? 102(d) and (e): When something is patented, what is the relevant date. o Filing Date o 18 Months before publication...
? Can be an issue: a patent can be secret and pending before you file your patent. Can make your invention obvious even if you never knew about it.
? 102(f): Must be the inventor. [Part of the novelty requirement also]
? 102(g): o (g)(1): Interference suits, multiple inventors claimed...
o (g)(2): Prior art... ??
? New 102(a)(1): o Critical Date is now the Effective Filing date o No geographic restrictions o "In public use, or on sale" - now in (a) rather than (b).
?o "or otherwise available to the public before the filing date" - catch-all.
? Why have this? Oral presentation, digital model?...
? Ex/ on a TV show - is it prior art?
102(a)(2): o For prior art, critical date is filing date. (Not a change) 102(b): Exceptions o One year grace period, but only applies to the disclosure came from the inventor or if disclosed by someone who got the information FROM the inventor.
? If made by someone NOT the inventor or joint inventor, then the cat's out of the bag. o [Preliminary application: if you want to file early to get an early date of priority, worried about prior art... Provisional application: application with disclosure but not claims. The claim-writing takes a while and is important, so can provisional application to disclose invention and work on claims for up to a year. Doesn't trigger 20 year clock]
? Printed Publication o Usually, when in doubt, thumb is on the scale for finding something prior art. o Who had access to it? Who was in the audience? Would they have known that this was secret or treat it as in the public domain?
o Court: Once in the public domain, people can use it and not worry about it. Don't want to remove it from the public domain. Lean in favor of finding things to be prior art.
? Previously Known: 102(a). Courts have limited in two ways. o (1) Not just one or a few people, but a lot of people. o (2) Need a lot of evidence to show that it was, in fact, previously known. o Hard to convince courts without corroborating evidence. Something physical, rarely is testimonial evidence sufficient.
? Public Use: o Invention has to be complete and not secret. (Rosaire).
? If taking active steps to protect secrecy, then not really in the public. o Two cases as a pair (Metalizing/WL Gore ?)
? Non-secret rule does not apply when the prior use was done by the patentee. If the patentee was exploiting the invention commercially more than a year before the filing date, it counts as a 102(b) public use. Don't want inventors to use invention in secret before filing for patent, to get a longer term.
? Rules does not apply if the prior use that was secret was a third party. [In fact, patentee can stop the third party from doing it]
? ** Preference for patents over trade secrets.
Buy the full version of these notes or essay plans and more in our Patent Law Outlines.