To assist one in quickly analyzing 35 USC 102, the following shortcut table and accompanying commentary is herein provided for your convenience:
|35 USC 102|
|A person shall be entitled to a patent unless:|
|(a)||Third-party||Known or used||Before invention||USA|
|Third-party||Patented or described in a printed publication||Before invention||Globally|
|(b)||Anyone (including inventor)||Patented or described in a printed publication||More than one year before filing||Globally|
|Anyone (including inventor)||Public use or on sale||More than one year before filing||USA|
|(d)||Inventor||Patented or subject of an Inventors certificate in Foreign country||Foreign application filed more than twelve months before domestic filing.||Foreign country|
|(e)____||Third-party____________||(e)(1)- Publication by WIPO/USPTO.(e)(2)- PatentDomestic – USA: (Published or patented) AND filed before inventionPCT : 1) WIPO publication of an International Application (PCT), filed on or after 11.29.00) AND filed before invention; 2) designate U.S.; and 3) publish in English (if filed before 11.29.00, use Pre-AIPA rules – see below)|
|(f)||Inventor||Not the actual inventor|
|(g)||Third-party||(g1) Interference – another establishes they invented first and did not abandon, suppress or conceal.(g2) Another invented first in USA and did not abandon, suppress or conceal – “reasonable diligence” applicable here.|
The primary factors that must be examined for determining whether a reference qualifies as a “printed publication” include: 1) dissemination; and 2) public accessibility. (See MPEP 2128.01)
The term “patented” as used above in sections (a) / (b) / (d) refers to the date that a patent was granted (not the date that the patent application was filed). (see MPEP 2126 – Availability of a Document as a “Patent” for Purposes of Rejection Under 35 USC 102(a), (b) and (d).
35 USC 102(e)
Section (e) is applicable to references which are either: 1) U.S. patents; 2) U.S. published applications (35 USC 122(b)); or 3) WIPO publications of international applications (IA) filed under PCT Article 21(2) ( international application has an international filing date on or after November 29, 2000).MPEP 706.02(f)(1) indicates that, “the 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 … If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined: (1) If the international application meets the following three conditions: (a) an international filing date on or after November 29, 2000; (b) designated the United States; and (c) published under PCT Article 21(2) in English, then the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).”
If the international application has an international filing date prior to November 29, 2000, the pre-AIPA rules must be followed which require:
- U.S. Patents: Allocate 102(e) date to either: fulfillment of 35 USC 371(c)(1)(2) and (4) or filing date of later-filed U.S. application (whichever is earlier).
- U.S. Patent Publication/WIPO Publication (direct): For U.S. patent publications and WIPO publications which result directly from the international application, no 102(e) date exists. Instead, the publication date may be utilized for 102(a) or 102(b).
- U.S. Patent Publication (benefit claim): If a U.S. patent publication claims benefit to an international application filed prior to November 29, 2000, the actual filing date of the later-filed U.S. application is the 102(e) date.
The MPEP includes a convenient 35 USC 102(e) Flowchart for determining 35 USC 102(e) dates. Additionally, it must be remembered that international applications (PCT) which fail to either publish in English or designate the U.S. WILL NOT be afforded a 35 USC 102(e) date, even if the international application claims benefit to an earlier-field U.S. application (non-provisional/provisional). However, such a reference may instead qualify under 35 USC 102(a) or 35 USC 102(b) as of its publication date.
An earlier filing date (than the application filing date) may be afforded to the subject application if a benefit claim is properly made therein to: 1) a provisional patent application under 35 USC 119(e); 2) a nonprovisional patent application under 35 USC 120; or 3) an international application under 35 USC 365(c).
Further, it must be remembered that an earlier filed application must in all instances provide 35 USC 112, first paragraph support for the claimed subject matter of the later filed application.
The MPEP provides an extensive overview of 35 USC 102(e) (see MPEP 706.02(f)(1) – Examination Guidelines for Applying References under 35 USC 102(e)). Additionally, the USPTO has provided the following guidance regarding this section: USPTO – Questions and Answers regarding 35 USC 102(e)
Overlap of 35 USC 102 Sections – Order of Application in Formulating a Prior Art Rejection
1) 35 USC 102(b)
One may have noticed that a reference can qualify for multiple sections of 35 USC 102; more specifically, some overlap between sections (a), (b) and (e) may arise. In determining the order of application of the aforementioned sections in formulating a prior art rejection which is included in an office action, Examiners will typically apply 35 USC 102(b) first as this section is a “statutory bar” which is absolute (e.g., cannot utilize a rule 1.131 affidavit to overcome a 102(b) rejection).
2) 35 USC 102(e)
Next, 35 USC 102(e) will be typically applied as references here are treated as “special” (e.g., application filing date is used under certain circumstances). It should be noted that a reference which is asserted under 35 USC 102(e) may be disqualified further to 35 USC 103(c) if the reference is: a) only prior art under 35 USC 102(e) (f), or (g); b) applied in a 35 USC 103(a) rejection; and c) the reference and subject application were commonly owned or subject to an obligation of assignment at the time of invention.
3) 35 USC 102(a)
A printed publication (e.g., patent publication) which is published (anywhere and “by another”) prior to the subject applications effective filing date may qualify under this section. Accordingly, if a reference is published prior to the effective filing date of the subject application, the aforementioned exclusion (35 USC 103(c)) will not apply as the reference will qualify under 102(a) (or 102(b) if published more than a year prior to the subject application filing).
If the aforementioned scenario arises, the Applicant may consider: 1) “swearing behind” the 102(a) reference utilizing a 1.131 Affidavit or Declaration (CANNOT utilize 1.131 to swear behind 102(b) references), 2) arguing differences between claim recitations and the cited art; 3) amending the claim(s); or 4) perfecting a benefit claim to an earlier-filed application (see also MPEP 706.02(b) – Overcoming a 35 USC 102 Rejection Based on a Printed Publication or Patent.
Further details regarding the foregoing may be found at MPEP 706.02(a) – Rejections Under 35 USC 102 (A), (B) or (E).