The invention process can take place in many ways. In some cases, serendipitous discoveries are made where the lucky but observant person happened to be the right person at the right place at the right time. As attractive and well established as this notion is in our common mythology, the truth is usually more mundane—inventionis often more evolutionary than revolutionary. Many if not most areas of chemical research or technology are in relatively mature areas with many years or decades of prior work leading to the present moment, and so new inventions are often the latest step in a long line of persistent research, representing the collective effort of many. A big challenge in patent law and a recurrent theme in our wanderings there in will be determining where the prospective inventor’s work begins and the previous efforts of others end. We have already developed a fond appreciation for the special exclusionary privilege a patent grants to its owner, and so we also appreciate that the inventor needs to give something back in exchange for that privilege. The bargain works where the inventor has brought something to the public that was not already available. But therein lies the rub, for what do we mean when we say that something is already available to the public? How publicly available does something need to be?
As we will learn shortly, not all “public” information is available for purposes of determining whether an invention is worthy of a patent. For example, some information may be considered in the examination of a patent application by one party but not another party, depending on who made the prior public disclosure. The types of public information that qualify for determining whether an invention is worthy of apatent are usually referred to collectively as the prior art. In this chapter, we will delve into what categories of information are available as prior art and what types are not; some of the distinctions might surprise you.
In several subsequent chapters, prior art will play the starring role in determining whether patents are valid and allowable, for it is the prior art that the patent application will be examined against. Whether determining if an invention is novel,non obvious, or even adequately described, the prior art will take its rightful place on center stage. As such, getting to know what is and isn’t priorart must precede any analysis of how a patent application is examined. Mirroring this order, any erstwhile chemical inventor should be familiar with the prior art in her are a before she makes costly research investments, particularly if her goal is to eventually patent her inventions.
The categories of prior art have been defined collectively under the aegis of 35U.S.C. §102 and are reproduced here. Taken in sum, the seven sections of §102 the categories of information or activities that the invention under consideration will be examined against.
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless—
the invention was 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 for a patent, or
the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States; or
he has abandoned the invention, or
the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in aforeign country prior to the date of the application for patent in this country on anapplication for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
the invention was described in—(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
he did not himself invent the subject matter sought to be patented, or
(1) during the course of an interference conducted under section 135 or section 291,another inventor involved therein establishes, to the extent permitted in section104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by anotherinventorwho had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception (emphasis added).
Please note the keyword unless in the first sentence of §102. This means that during examination of the patent at the USPTO,it will be the responsibility of the examiner to provide a basis for rejection of the patent application. If the patent examiner cannot affirmatively reject a claim in the patent application, then that claim must be allowed.
To do this, the patent examiner will rely on the “best available art” when making a rejection, meaning the examiner is instructed to avoid making rejections that are cumulative in nature. A cumulative rejection is one that merely stands on the same grounds as one or more other rejections. In the case in which the strongest references or set of references is not able to sustain a rejection, additional weaker references standing on the same grounds will not add anything to the rejection and thus are to be avoided.
Before getting started in earnest, it is important to understand the one thing that most distinguishes U.S. patent law from the rest of the world is that under certain circumstances a patent is awarded in the United States to the first person to invent the claimed subject matter rather than the first to file the patent application. As one consequence of the first to invent system, it is possible that one can receive a patent in the United States arising from a patent application that was filed after another party filed their patent application, even when both patent applications claimed the same invention. In the rest of the world, the first applicant to file the application is the one who will be awarded the invention (assuming she has met all of the requirements of patent ability in that country). As another consequence of the first to invent system,we will see that certain types of prior art may not apply to an applicant who is able to successfully assert that she invented the subject matter before the effective date of that prior art. The process of proving invention before the date of a piece of prior artis often referred to as antedating (or swearing behind) a prior art reference, and this feature flows from the first to invent characteristic of the American patent system.
As a result, one might be able to obtain a patent in the United States but not the rest of the world (and vice versa). However, there are limitations to the first to invent rule because there are certain events that can absolutely deny patent ability to the first inventor—these are referred to as statutory bars. U.S. patent law reflects a balance between rewarding the first inventor with a patent and yet encouraging that same inventor not to sit on the invention too long before filing the patent application.
The seven sections of §102 may be grouped according to whether they apply to the patent applicant’s invention date or the patent application filing date. Accordingly, §§102(a), 102(e), 102(f), and 102(g) are grouped together as they relate to events that occur before the patent applicant’s date of invention. As mentioned earlier, it is sometimes possible to remove those references by antedating them by showing invention before the effective date of the prior art reference (or prior art activity). The remaining §§102(b), 102(c), and 102(d) cover the statutory bars and are directed to types of prior art occurring before the patent applicant’s date of filing and that cannot be removed, sworn behind, or antedated by demonstrating invention before the reference date. We will cover each of the types of prior art separately.
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