PRIOR ART THAT CAN BE ANTEDATED - Patent law

3.2.a§102(a)

Prior art under §102(a) includes only the works of “others” and thus one’s “own”work does not apply. This follows because for §102(a) to apply as prior art, the invention that one is attempting to patent must be “known or used by others in this country, or patented or described in a printed publication in this or a foreign country,before the invention thereof by the applicant.” Why does §102(a) apply only to the works of others? The primary reason is that it is unlikely that an inventor or group of inventors could know or use, patent or describe their own invention in a printed publication, in this or a foreign country before their actually inventing the subject matter (unless their invention was for some sort of time machine that they then use don themselves). Section 102(a) of the code simply reflects the fact that the United States is a limited first-to-invent country by setting the defining time point before the invention and as a result, the basis for a patent application rejection under §102(a)must be effectively dated before the invention of the applicant.
The types of prior art in §102(a) include publications and patents as well as knowledge (known) and use. These publications, patents, knowledge, or uses might have multiple parties listed or involved, just like the patent application, which may list one or more inventors. For purposes of §102 (a), the word other is narrowly construed. If the person or group of people who are the collective authors of the prior art publication (or patent), or the collective users or knowers of the prior art invention are in anyway different from the listed inventor or joint inventors on the patent application under consideration, then that prior art can be considered to be that of “another,” and that art applied under §102(a) against the invention. The list of inventors on a patent application are collectively referred to as the inventive entity, and so another way of thinking about this requirement is to understand that the inventive entity must be different from the source of the prior art in order for section §102(a) to apply. For example, a publication with the authors Traney, Collino, and Miller could still be cited as prior art under §102(a) against a U.S. patent application naming only two of the authors (e.g., Collino and Miller) as inventors. Since Collino and Miller together constitute the inventive entity, the original publication is considered to be by “others” for purposes of §102(a). Presumably the reason for this rule is that it is possiblethat the author that was not listed as an inventor on the patent application(Traney in this instant) actually “invented” some of the subject matter that was in the publication (and later claimed by the other two authors in their patent application).
In such a case, the listed inventors might not have invented the subject matter of all of the claimed invention before the material in the publication since some of the claimed subject matter could have been invented by the author who was not listed as an applicant—the third author (Traney) may have invented some of the subject matter first.

Assuming that the patent applicants believe they are the correct and complete list of applicants for the invention and that the additional co-author(s) of the §102(a)reference did not invent any of the claimed subject matter of the patent application,the publication can be removed as a citable §102(a) reference in a couple of different ways. One way of removing the reference is for the author of the paper who was not listed as an applicant on the patent application to write an affidavit stating that the pertinent portions of the cited publication originated with the patent applicants rather than the non applicant co-author. As an alternative, the applicants for patent may themselves assert by declaration that the relevant portion of the cited reference is the applicants’ own contribution/invention. However, if it is determined that the non listed inventor was actually a co-inventor who should have been listed as an inventor but was mistakenly left off, the patent application may be amended to correct the mistake in inventor ship provided the correction is in accord with the requirements for amending inventor ship. The addition of the non listed author to the patent application results in the list of the publication authors and the inventive entity being the same.The publication is no longer by “others” and thus no longer available as prior art under §102(a).
The definition of “printed publication” includes works that are disseminated or otherwise available such that one of ordinary skill in the art, exercising reasonable diligence can locate it. As applied, this definition has been interpreted very broadly to even include a thesis dissertation that was cataloged into a German university’s library system, distribution of six copies of an oral presentation delivered to a congress, an Australian patent application kept on microfilm at the Australian Patent Office, and even a poster that was presented for 3 days at a conference since that poster did not explicitly require confidentiality or explicitly restrict the making of copies of the poster. There still remain some gray areas, such as whether a transient display of slides accompanying an oral presentation can be considered a “printed publication.” Ina 1981 district court decision, this was not considered to be a printed publication, but modern technology allows easy photography of slides (a common occurrence even at meetings that ban photography) and this may change. Finally, information available on the Internet can be a printed publication. A common theme in determining whether a disclosure is a publication so as to qualify as prior art focuses on whether the publication was accessible to the public in a “meaningful way.”
You may have noticed that the “known or used” provision of §102(a), unlike printed publications, applies only within the United States. Thus, for example, the use of an herbal treatment for a particular malady as practiced by a nativeAndean tribein South America might not prevent a patent to an independent but later discovered invention of the same thing in the United States. However, if the tribal medicine man had published on the treatment in the Today’s Medicine Man journal, this could then serve as prior art under §102(a). Probably more than anything else, this distinction is rooted in the historical concerns regarding the ability to obtain evidence of activities occurring outside of the United States versus within the United States. While this concern is still real, the world has shrunk very significantly in recent years, and the wisdom of making this distinction has become increasingly questioned.

It is interesting that §102(a) requires literally that the invention only be “known or used” in this country. What if somebody (or a limited group of people) knew about or used the invention and never disseminated information about their use? Should that be considered prior art under §102(a)? In a strict construction one could say literally that the invention was “known” or “used” by a person or persons in this country, but would denying the granting of a patent on such a previous but secretive use make sense? In keeping with the patent system’s priority on encouraging public disclosure of inventions in exchange for a period of exclusivity to the first inventor, denying somebody that exclusivity because of prior secret knowledge would not lead to a very sensible result. The courts have agreed, the “known or used” verbiage requires that the knowledge or use must be accessible to the public. If a person or group of people knew about or used the invention but kept that knowledge secret, then it would not benefit the public at large. Since the patent system rewards and encourages the public disclosure of inventions, the proper balance is still in place where the prior art has not met that burden but the applicant’s invention has.
As you were reading this section, you may have at some point come to wonder what is meant by the effective date of the prior art. In keeping with the general purpose and intent of the prior art, we can appreciate that its effective date should relate to the date that it begins to fulfill its purpose of informing the public. In so doing, priorart becomes effective when it actually becomes generally accessible by the public.Thus, for example, a magazine or journal article becomes prior art not on the day it is printed or on the day it is mailed but rather on the day it is first received by an addressee. Many publications have online versions and the effective publication date could very well be the day it was posted on the Internet.
Since §102(a) refers to prior art events that have an effective date before the invention by the applicant, it is critical to know how to determine when an invention occurs. For this, it is first necessary to appreciate that an invention is conveniently thought of as consisting of two parts: conception and reduction to practice. The conception portion relates to the mental aspect of the invention, the idea of the invention before it is put together in tangible form. The reduction to practice can be actual or constructive. An actual reduction to practice is the putting together of aworking example, model, or prototype of the invention and demonstrating that the invention works to fulfill its intended purpose. A constructive reduction to practice is the filing of the patent application itself. The linchpin connecting conception and reduction to practice is the concept of due diligence. The due diligence in regard to an actual reduction to practice means reasonable diligence on the part of the inventor.
The establishment of reasonable diligence is necessarily fact specific but will require proof that the invention was worked on during the entire required diligence period,or acceptable excuses must be provided for lapses in time; mere statements will not suffice, and the work relied on to show diligence must relate directly to the reduction to practice of the invention (attempts to commercialize or finance the reduction to practice have been held to be not sufficient). In a constructive reduction to practice,reasonable diligence must be exercised both by the inventor and the attorney or agentwhomight be assisting in preparing the patent application. An applicant for a patent can establish an invention date before a cited §102(a) reference by demonstrating that they either (1) reduced the invention to practice before the effective date of the§102(a) reference, (2) conceived the invention before the §102(a) reference date and then exercised due diligence from before the §102(a) reference date to the actual reduction to practice, or (3) conceived the invention before the reference §102(a)reference date and exercised due diligence from before the §102(a) reference date to the filing date of the patent application (constructive reduction to practice). From the latter two examples, one can see that the invention need not actually be completed before the effective date of the §102(a) reference date as long as it was conceived before the reference date and the inventor(s) exercised due diligence from some time before the reference date to the reduction to practice (actual or constructive). Proving prior invention in order to antedate a §102(a) reference for the purposes of obtaininga patent requires that the inventor or owner of the patent application submit an oathor declaration establishing the facts necessary to show prior invention. This is known as antedating or swearing behind the cited §102(a) reference. To antedate or swear behind the cited reference, the inventor(s) will need to have invented the claimed section matter in question before the effective date of the reference, and the invention will need to have been made in the United States, a NAFTA country, or a WTO member country (this probably does not leave too much out). The actual showing of proof will normally be in the form of an affidavit, which includes drawings or records (or copies thereof) unless there is a satisfactory explanation for not having such record of proof. If the applicant’s proof is accepted, the §102(a) reference can properly be removed as prior art. Perhaps as an inventor or as a prospective future inventor, you have been reminded of the importance of keeping accurate records documenting and dating your research efforts. You also might have been asked to have a co-worker witness and sign your lab notebook pages. These requirements are primarily due to the critical importance of having proof of the actual invention date. As we have seen in this section, §102(a) prior art references (as well as §102(e) and §102(f) references to be discussed later) can be antedated to show invention before the reference’s effective date. In the case of§§102(a), 102(e), and 102(f), the proof of prior invention will be used to demonstrate invention before the effective date of the reference itself. In the case of §102(g), two or more different inventors will be competing to demonstrate who made the invention first. In both cases, the success or the failure can well turn on the quality of evidence that the inventor can produce. If (and until) the United States adopts a first-to-file system, the accurate documentation of one’s ideas and efforts will continue to be of significant legal importance.

3.2.b§102 (e)
A second 102 section relating to the work of “another” is §102(e), which is concerned with patent applications: (1) that are filed in the United States and published by the USPTO or (2) that are filed in the United States and issued into patents by the USPTOor (3) that are filed as international PCT patent applications and are published (e.g.,WO published patent applications) in English and designate the United States. The effective prior art date for a §102(e) reference is the date that the patent application is filed and not the date it was published (or patented). Moreover, if the published U.S. patent application or patent claims priority to a U.S. provisional patent application,then the filing date of that provisional patent application might become the effective date of the §102(e) reference. International PCT applications can also be effective prior art as of their filing date (rather than their publication date) under §102(e) when the international application was filed on or after November 29, 2000, designated the United States, and was published in English. As a practical matter, this means that when you see a published US or PCT application (designated with publication numbers preceded by WO), its effective prior art date could very well be before the publication date of the patent application. These rules have the interesting effect of“pretending” that the contents of a patent application becomes available to the public on the filing date of the application, even though the patent application will not be published and actually available to the public for some period of time, typically about 6 months from the non provisional patent application filing or 18 months from the earliest provisional filing.

In a similar fashion to §102(a) prior art, §102(e) art can be sworn behind or antedated, except that it is necessary to prove invention before the filing date of the application or even an earlier provisional application. However, §102(e) prior art can also function as §102(a) prior art and, depending on whether it’s been published for over a year, it can serve as §102(b) art as well (we will cover §102(b) shortly). You might wonder how many times can you hang somebody with the same piece of prior art and so does it really matter how many different ways the same reference is cited?
Interestingly enough, it can. Sometimes it is possible to avoid or remove a reference cited under one section of 35 USC 102 but not another. For example, an applicant’sown patent application cannot be prior art against him under §102(e) but, if it has been published for more than 1 year, that same patent application can be non-removableprior art under §102(b).

3.2.c§102 (f)

Section 102(f) is not a common source of prior art since it is concerned with the situation in which one party conceives an invention and that invention is learned of by another who then attempts to claim the invention himself in a patent application.21Section 102(f) is useful in circumstances in which a citation under one of the other 102sections is not appropriate. For example, under §102(a), we learned that public use outside of the United States would not be a basis for rejection under that section, but deriving one’s invention from witnessing that public use and filing a patent application on that derivation could still be cit able under section §102(f) since §102(f) does not have any geographic restraints. Perhaps more generically, one might best think of§102(f) as describing a situation in which the patent application fails to properly list the inventors. Under many circumstances, this type of error can be corrected.

3.2.d§102(g)

Section 102(g) describes another’s prior invention as prior art. Section 102(g) is broken up into two sections, the first and most important section deals with the situation where two or more parties are trying to establish who invented something first. Since the United States is a first-to-invent country and the same invention cannot be patented twice, it stands to reason that when two separate inventive entities independently derived their inventions (if one copied from the other then we have asection §102(f) problem), only one of those entities will be awarded the patent—the party that first invented the subject matter. As we learned before, the first to invent is the one who reduces the invention to practice first, unless there is an earlier conception date followed by due diligence up to the reduction to practice. The contest to proveinventorship between two separate inventive entities is referred to as an interference.The actual interference proceeding itself is somewhat akin to mini-patent litigation in which two or more parties are pitted against each other in an evidentiary proceeding either before the USPTO’s Board of Patent Appeals and Interferences or in the federal courts. The party that loses the interference will have the other party’s inventioncited against him as prior art under section §102(g), which will serve to prevent them from getting a patent to the contested subject matter.

Procedurally, interference occurs when one or more claims in a patent application is substantially the same as one or more claims in another patent application with certain time bar limitations when the action can occur. These time bars are aconsequence of §102(b), which sets a time limit on the first-to-invent aspect of U.S.patent law. A later filed patent application that claims or could be drawn to claim the same subject matter as an earlier filed patent application or patent must be filed within 1 year of the time the earlier patent application was published or patented. If the later applicant files after the 1-year period, then the earlier art becomes §102(b)prior art that cannot be removed by proof of prior invention. As a practical matter,§102(g) prior art can be especially problematic because it can take the longest time to discover, and moreover, an interference can take significant time (and money) to resolve.
One way that interferences occur is when inventors sees a published patent application or patent claiming the same invention that they have already conceived ormade.Within a year, they file their patent application claiming substantially the same invention and bring the conflicting subject matter to the attention of the patent examiner.In another, perhaps more common scenario, two or more separate inventors or inventive entities are working in a competitive area, and they file applications claiming or that could claim the same invention in a similar timeframe. During the course of the examination of the two applications, an examiner discovers the common subject matter and alerts the applicants to the situation and suggests a claim for one or both of the applicants that will provoke the interference.
The second prong of §102(g) deals with prior inventions as prior art but not in the context of a patent interference. Section 102(g)(2) might be relevant, for example,when one party is trying to invalidate another party’s patent but he is not trying himself to get a patent issued to the same subject matter. A common way to try to invalidate somebody’s patent is to allege that it is not novel in view of prior art under one or more 102 sections. One possible category is §102(g)(2), if it can be established that third party invented the subject matter first (in the United States). The reason why this is not expected to be a highly used provision is that the prior invention by another party might be hard to establish since to know that another party invented the subject matter first typically would require some sort of public performance of the invention.
This prior public performance of the invention could also qualify under §102(a) or§102(b), which might be cited instead. If the invention by another party was being cited under §102(g)(2) but not under §102(a) or §102(b) due to the fact that there was no public disclosure, then one has to deal with the simple evidentiary problem of how one would discover the prior invention in the first place. Last, you might have noticed that the invention cannot have been concealed, abandoned, or suppressed to qualify under §102(g)(2). If the prior art qualifies under section §102(g)(2) and not under §102(a) or §102(b), the implication is that there was not a public use but at the same time there was also no concealment, suppression, or abandonment—not a sure contradiction but a thin slice to stand on never the less.
To better appreciate §102(g) and the possibilities presented by some different scenarios, let’s consider a hypothetical example. Imagine that two chemists working at different companies separately synthesize a novel pigment for use in a new kind of floor coating and paint. Chemist A got the idea for the pigment composition on June 1,2007. He thought that by combining a certain metal salt with a particular oxidizer, he could make a metal oxide with just the right stoichiometry to make a great pigment for use in different coatings. On that same day he recorded the idea and had it witnessed in his notebook. He shelved the idea for a few months because he had some other projects that needed to be finished up first, and he did not have the time to get to it right then. So on September 1, 2007 when he was finally finished with his other work, he decided to test his idea by first making the pigment that he had earlier written down in his notebook. He worked on the idea diligently for the next several weeks, optimizing the conditions for making the metal oxide pigment. Once he had several batches of the pigment prepared, he combined them with a base material and demonstrated that the pigment could indeed function as good ingredient for the paints and coatings as he had originally envisioned; this all occurred on and around September 26, 2007.The company’s patent attorney drafted and filed the patent application in record time(his own record, that is), and so the patent application covering the pigment was file don December 9, 2007.
Unbeknownst to Chemist A, over a similar period of time, Chemist B stumbled upon the exact same pigment. For Chemist B however, the discovery process tooka more serendipitous yet expeditious route. Here is the honest truth as to how it happened. On August 27, 2007, Chemist B happened to be in the lab when her arm bumped into a flask containing an unknown powder that spilled out onto the bench.“Oh darn” she said and grabbed a roll of paper towels but when going to wipe the powder up, she then accidentally knocked over a flask containing a clear solution that spilled all over the powder. “Double darn!” the unlucky chemist exclaimed but then glancing down at the mess thought “Ooooh, that’s really pretty. I’d better save that stuff.” She grabbed a chamois cloth and soaked up the pigment and squeezed it out into what she thought was an empty bucket but then realized the bucket was partially filled with some sort of liquid. “Triple darn” she cried, “Now I’ve got a real mess!”As she bent over to pick up the bucket, she accidentally kicked it over onto the floor.She was so mad that the words she attempted to sputter were choked off in her throat.She was never going to get home in time for dinner now. Resigned to her fate she let out a deep, relaxing breath as she had been taught so often to do, grabbed a mop and began to swab the lab floor. As she mopped the floor, she wasn’t sure if what she was seeing was really true because it was hard to visualize clearly through her tear-glazedeyes. It appeared that whatever was in that bucket made one of the most beautiful,fast-drying paints she had ever seen—it had a pearlescent, almost acrylic glow that was growing even more beautiful by the minute, right before her very eyes! Each push of the mop increased the shine. “I’ve got to find out what all that stuff was,”she excitedly thought. She called the chemist whose lab it was and asked him what each of the ingredients was. As she learned that day, the powder was a particular salt the chemist had been working on, and the flask contained an oxidizing agent that he figured must have converted the metal salt into its metal oxide. The metaloxide was then inadvertently dumped into the bucket, which contained a polyacryliccontainingbase material that, when combined with the freshly synthesized pigment,formed the beautiful coating that now permanently adorned their lab floor. “I’vegot to document this stuff right now before I forget,” Chemist B hurriedly thought,abandoning all ideas of dinner and getting home on time. “This could be the big break I’ve been waiting for!” She wrote everything down in her notebook and had it witnessed by the chemist whose lab she was using and who understood the nature of the invention when explained to him. Over the next several months, she performed some additional controlled experiments to verify the early result and wrapped up the work on February 17, 2008. She contacted the company’s attorney who drafted their application for patent and filed it on April 1, 2008. The patent application covered the same metal oxide as Chemist’s A.

During the course of his normal review, the patent examiner at the USPTO discovered that two pending applications assigned to two different organizations contained claims to the same subject matter—the metal oxide useful as a pigment in paints and/or coatings. An interference was declared, and the parties set out to establish who invented the subject matter first. In this case, Chemist A will be considered as the senior party and the presumption will be made that Chemist A is the first to invent.This is because Chemist A was the first to file a patent application, on December 9,
2007. Chemist B will be considered the junior party since her patent application wasnot until April 1, 2008, and it will be up to Chemist B to overcome the presumption that Chemist A was the first to invent. Let’s go through the arguments from each side.
During the course of the proceedings, Chemist A was able to prove a conception date of June 1, 2007, due to his meticulous notebooks. He was able to successfully argue that he had fully conceived of the pigment and its preparation; he needed only to actually synthesize the material and test it out to prove it work for its intended purpose (reduction to practice). The actual reduction to practice did not require anything beyond ordinary testing to prove that the pigment could work to form agood coating material. In view of this information, Chemist A’s patent litigation counsel has adopted the position that the date of invention was the same as the date of conception, June 1, 2007. Since it occurred before Chemist B had any idea about any such pigment (her accident did not occur until August 27, 2007), Chemist A should be awarded the patent. The patent attorney relaxes and prepares for his annual four-week summer Caribbean vacation, confident in the strength of his client’s position.
Let’s review the law to see if the patent attorney should be so confident. In our discussion of section 102(a), we learned that prior invention could be proved by a reduction to practice before the reference date or a conception before a reference date followed by a period of due diligence until the actual or constructive reduction to practice. In the case of Chemist A, there was an actual reduction to practice that occurred when Chemist A synthesized the pigment and showed that it worked for its intended purpose, which occurred on September 26, 2007. The filing of the patent application is a constructive reduction to practice and would serve as a reduction to practice had an actual reduction to practice not occurred first. To use the conception date, however, Chemist A will need to show that he was diligent from the conception date to the date of the reduction to practice. If he is not able to show due diligence from the conception date to the reduction to practice, he will not be able to mark the conception date as the date of the invention. Instead, the date of the invention is the time period from when the due diligence began and ran without stop up to the reduction to practice. In our instant case, we can readily see that Chemist A did not practice due diligence from the conception of the invention up to the actual reduction to practice. Rather, he shelved the idea until he finished some unrelated work and then started working on it in earnest on September 1, 2007.We thus have the timeline for Chemist A: June 1, 2007, conception; September 1, diligence starts; September26, actual reduction to practice occurs; and December 9, constructive reduction to practice occurs. So, the attorney’s argument that the date of invention was June 1,2007, is not correct because he glossed over the diligence requirement—the effective date of invention is actually September 1, 2007.
Now that we have the priority date for Chemist A, let’s see what we can come up with for Chemist B. First, unlike the case for Chemist A, Chemist B never conceived the invention in the usual sense; rather, she recognized and appreciated the invention after the physical act of combining the chemicals had already occurred. Since an invention requires both a mental part and a physical act of some sort (even if the physical part is only the filing of a patent application), the invention will not have occurred until both parts have come together. Normally the way this is explained is that the reduction to practice is not complete until the results are recognized or appreciated. In the present example, Chemist B recognized the results and appreciated them on the day that the invention was reduced to practice. First, she saw the results of the inadvertent mixture after it had formed, thus establishing a utility for the invention,and then she contacted the chemist whose lab it was to understand what the invention actually was. In this situation it is likely that Chemist B’s invention date is the day the accident happened because that is the same day that she learned what actually made up the invented subject matter; it appears she fully understood the invention at that point, and the subsequent efforts were directed at further routine testing of the pigment. In this case, due diligence in the normal patent sense of the word wa snot required, we used that term to link an earlier conception to a later reduction to practice to establish the earlier date of conception as the invention date. In the present hypothetical, there is no issue of an earlier conception date with respect to ChemistB’s invention since Chemist B did not conceive the invention in the usual sense of the word. The timeline for Chemist B is thus: August 27, 2007, actual reduction to practice and recognition of invention; and April 1, 2008, constructive reduction to practice. Accordingly, her invention date was August 27, 2007.
Not to be deterred, Chemist A’s legal counsel convinces his client that he should not concede yet. Chemist A’s counsel informs his client that he has carefully reread the text of the §102(g) statute and he has cleverly discovered in the fine print that it gives priority to the earlier inventor, but only in cases in which that inventor has not“abandoned, suppressed or concealed” the invention. Chemist A’s side needs only to establish that Chemist B committed one or more of these three sins. Since §102(g) is concerned with priority contests between parties, the guilty party will be put behind the other party and lose the priority contest together with any patent to the contested invention. This begs the question of what it takes for an invention to be abandoned suppressed, or concealed, and, not surprisingly, this is a question of the particular facts of the case. In the facts of this case, it was approximately 7 months from the date of Chemist B’s discovery and the filing of the patent application, and it appeared the time was used to further test and evaluate the discovery as well as file the patent application. Under these facts, it is unlikely that Chemist B will be found to have concealed or suppressed the invention; Chemist A is unlikely to prevail with this argument.
Not ready to give up until he has exhausted all of his client’s legal arguments(and finances) Chemist A’s patent counsel argues that Chemist B never conceived the invention at all. Without a conception, there can be no invention and therefore Chemist B’s accident does not qualify as an invention in the first place. Do you agree?Conception in the patent law sense of the word has been defined as “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.” In the instant case, ChemistB did not conceive of the invention prior to her serious of serendipitous stumbles.In effect, the invention was conceived after the physical happening occurred; no immaculate conception here but perhaps a type of conception nevertheless. Unlike Chemist A’s discovery, Chemist B’s invention was essentially complete when she conceived it, since the physical proof that the invention would work for its intended purpose had already occurred. In that sense, Chemist B’s conception of the invention was as much a recognition or appreciation of the invention as anything else – onceit was recognized and appreciated, it was complete. Despite the unusual etiology of Chemist B’s invention, it was an invention nevertheless, and it can be dated to August27, 2007,when both the reduction to practice and recognition occurred.


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