PRIOR ART THAT IS AN ABSOLUTE BAR - Patent law

Sections 102(b), 102(c), and 102(d) represent absolute bars to a patent applicant’s invention in the sense that references cited under any one of these sections can not be antedated by proving prior inventor ship—the patent application in question must have been filed before the events listed under these sections. Further more, these absolutebars apply both to an applicant’s own work as well as the work of others.

3.3.a§102 (b)

A key element of §102(a) prior art is that it relates to the date of the invention by the applicant. For a §102(a) reference date to effectively block the applicant’s work, the§102(a) event must have occurred before the date of the invention by the applicant.However, the provisions of §102(b) provide an important limit to the first-to-inventrule. The section of prior art defined in §102(b) is referred to as the absolute bar because it limits how far one can go in antedating a prior art reference to prove earlier invention in the United States. Specifically, a patent for an invention cannot be obtained in the United States if the invention was patented or described in a printed publication (or in public use or on sale in this country), more than 1 year before the date of application for patent in the United States. Thus, even if the applicant made the invention before the §102(b) event, she will be barred from being granted a patent if she does not file the patent application within 1 year of that 102(b) event. Note that §102(b) does not contain the phrase by others as in §102(a). Thus if an applicant publishes her own invention more than 1 year before filing the application for patent,she will be barred by §102(b) from being eligible to be granted a patent in the United States. Likewise, if a §102(b) event by another occurs, a patent applicant in the United States will not be able to antedate the §102(b) event.
In addition to the patent and publication bars, §102(b) also contains “public use”and “on sale” bars, if the activity occurred in this country but not if the activity occurred in a foreign country, but it does not precisely define what these two terms mean. Separating public from nonpublic use or sale of an invention is not always atrivial or easy endeavor. Often, scenarios for which this determination must be made relate to whether the inventor’s own use of her invention constituted a public use and thus whether the 1-year clock started ticking. Unfortunately, there is no simple algorithm for determining whether a use is public or not, but there have been many cases that provide some general guidance. Ultimately, whether a use is public or not depends on the weighing of the many facts related to the alleged public use.
Some facts weighing against a finding of public use include the presence of a confidentiality agreement or obligation of secrecy. Along these lines, a public use has been said to occur where an inventor has allowed another person to use the invention “without limitation, restriction or obligation of secrecy to the inventor.”The evidentiary purpose of the confidentiality agreement or order of secrecy is to demonstrate the level of control the inventor demonstrated over the invention as well as the purpose of the use. In this regard, the nature and location of the invention’s use can also affect the outcome of the determination. Where the inventor’s use is limited to places where she had a “reasonable expectation of privacy” and the use was for the inventor’s own enjoyment, that use would not be likely to constitute a public use.
An important aspect of public use of an invention is that it does not require that the invention be in open display to be in public use; the only requirement is that the invention is being used in its “natural and intended way.” As a result, the sale or public use of a chemical mixture such as a paint, coating, or medicine would likely still be a public use even though the components in the mixture are not readily discernable to the public. In a similar vein, sale of a good made by a certain process is a public sale of the process and will toll the §102(b) time clock even though the process used to make the good could not be discerned from the good itself.
In certain instances, it is necessary for an inventor to test an invention before filing the patent application, and that testing may require the use to be public. Some examples relevant to the chemical industry might include, for example, an additive to tar, asphalt, or concrete that is put in to improve the durability of the substance. In such a case, it might be necessary to test the substance under real-world conditions by actually using it to make a floor, road, or wall that is used according to its normal purpose to provide an indication of how well the substance will work in comparison with several different formulations over a long period of time to see which one works best. Likewise, to patent a compound as a drug, some indication of utility is required.
Usually, this can be achieved by demonstrating the compound has activity in in vitro assays or animal models (i.e., the USPTO has very different criteria for demonstrating utility than does the Food and Drug Administration). However, in some instances,the establishment of a compound’s utility might be possible only in a public human clinical trial. To assist in the determination of whether a use or sale is of a public nature for purposes of §102(b) or whether the use or sale is experimental, the court shave provided the following list of factors: (1) the necessity of the public testing,(2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made,(6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, (9), the degree of commercial exploitation during testing, (10) whether the invention reasonably requires evaluation under actual conditions of use, (11), whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts with potential customers.

The three primary points of concern with the on sale aspect of §102(b) are whether a sale or offer for sale has actually occurred, whether the invention was ready for patenting, and whether the sale was primarily commercial or experimental. Whethera sale or offer for sale has actually occurred can be determined by contract law.

Essentially, an offer can be deemed to have been made where an acceptance, whether actually made or not, would be legally binding on the offer or. It is important to note that the sale referred to in §102(b) is a sale or offer for sale of the invention itself and not the rights in the invention. For example, a license granting marketing rights to a compound is not the same thing for purposes of §102(b) as a sale of the compound itself—the first activity would not toll the statute whereas the second will. Unlike the public use portion of the §102(b) statute, the courts have found that a sale doesnot have to be public to constitute a sale. In a similar fashion to what we saw for the public use portion of §102(b) where the invention does not need to be revealed to be in public use, the sale of the item does not require that all of the aspects of that item be understood or known by either of the parties to the sale; the sale of the item is sufficient.
In reference to the second point, an item can be ready for patenting if it has already been actually reduced to practice. However, an actual reduction to practice is not necessary if the invention being sold is capable of being reduced to practice without extraordinary effort or skill—for example, if the inventor has prepared descriptions or drawings of such specificity to enable one of ordinary skill to practice the invention.
Finally, as we saw previously for the public use bar, an experimental use can also negate an “on sale” §102(b) bar since there are instances when even a sale can be considered primarily experimental in nature. Obviously, the sale of the invention is not experimental per se, but the purpose of the transfer of the invention might be to allow use and observation of the invention to test its claimed features in various real-world settings. The question really turns on whether the purpose of the sale was primarily commercial or primarily experimental. Purpose implies intent on the part of the inventor, but one should appreciate that intent is inferred from the objective factual indices surrounding the sale or attempted sale. The presence of sales lists, advertisements, demonstrations, etc. are all typical of commercial sales activities rather than experimental sales activity.
In effect, §102(b) serves to balance the interest of the public with those of the inventor. Once a non patented invention is in the public domain, it is not unreasonable for the public to begin to take notice of that invention and begin to use that invention for its own purpose. If the invention is not patented and there is no record of a patent being filed on that invention, there would be no way for the public to be notified that the use of the invention could eventually become an infringement. An inventor might even try to take advantage of such a situation by publishing her own invention and waiting for a large segment of the public to begin to use and rely on the invention.

Then, like a hunter springing the trap, the inventor could file and obtain patent on the invention. The public would then have to deal with the effect of the patent on their continuing use of the now-patented technology. Section 102(b) limits this possibility by allowing the inventor only a 1-year lead time between the events listed in §102(b)and the ability to file for a patent. Thus a reasonable balance is achieved between allowing an inventor time to perfect his or her invention before filing an application for invention and the public interest in being able to rely on information available in the public domain.

3.3.b§102(c)

Section 102(c) is a little used provision but is still included in this section since a finding of abandonment under §102(c) acts as an absolute bar to a later filed patent application. Abandonment requires intent, either actual or inferred, on the part of the inventor to dedicate the invention to the public. Mere delay in the filing of a patent application, absent more, is not sufficient to impute the motive to abandon the invention on to the inventor.

3.3.c§102(d)

Section 102(d)works as an absolute bar when a foreign patent application is filed more than 1 year before the U.S. filing and when that foreign application issues into a patent or inventor’s certificate before the patent application claiming the same invention is filed in theUnitedStates. Both conditions must be met. It is important, though, that itdoes not matter if the foreign patent claims the same subject matter as the subsequent U.S. patent application, rather the foreign patent needs only to contain description sufficient in its specification to fully support the material claimed in the later-filed U.S.patent application. For example, if an applicant or inventor filed a patent application in another country containing the description of a compound, a process for making the compound and a method of using that compound but claims to only the compound itself were issued in the foreign patent, the patent could still be good as a prior art reference under §102(d) against a later filed U.S. patent application that claimed only the process for making the compound since the earlier foreign patent application provided description that could have allowed a claim to the same subject material. Section 102(d) is somewhat unique in that the prior art under §102(d) qualifies only if the invention was assigned to the same party as the later filed U.S. patent application.

The rationale for this section of the patent laws appears to be to ensure that inventors filing for a patent in foreign countries also promptly file for a patent in the United States. Rejections of a patent application under §102(d) are uncommon.


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