[NOTE: This article is part 2 of our Patentability Overview series. To start reading from the beginning please see Patentability Overview: When can an invention be patented?]
Despite the impression given by the low hurdle presented by the first two patentability requirements (i.e., eligibility and utility), not every invention is patentable. One of the most common problems for applications is 35 U.S.C. §102, which sets forth the doctrine of anticipation by requiring novelty of invention. Essentially, §102 requires the patent applicant to demonstrate that the invention is new. In essence, in order for a claimed invention to violate this “newness” requirement it must be exactly identical to the prior art.
In order to understand the requirements of §102 it will be helpful to explore the concept of anticipation in detail. A claim is said to be “anticipated” if comparison of the claimed invention with a prior art reference reveals that each and every element in the claim under attack is shown or described, organized, and functioning in substantially the same manner as in the prior art reference.
Anticipation is perhaps most easily understood as the converse of infringement: “That which will infringe, if later, will anticipate, if earlier.” So one way to look at whether your invention is new, as is required under the meaning of §102, is to ask whether your invention would infringe another patent already issued. In the situation where the reference is not a patent but is a printed publication ask whether your invention would infringe if the printed publication were an issued patent instead of just a printed publication.
The standard for anticipation (and hence for newness) is a rigorous one; requiring that every element of the claimed invention, as arranged in the claim, be disclosed either specifically or inherently by a single prior art reference. To be sure, every element of the challenged claim need not be expressly delineated in a single prior art reference, but may be inherently disclosed by prior art if “the prior art necessarily functions in accordance with the limitations” of the challenged claim. However, if the decision-maker (i.e., judge or patent examiner) must go beyond a single prior art reference, the proper challenge is under 35 U.S.C. §103 for obviousness, not §102 for novelty. A reference will, however, anticipate a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.
Effective March 16, 2013, the United States changed its patent laws to move from a first to invent jurisdiction to a first to file jurisdiction. The America Invents Act (AIA) is responsible for making this change, and the importance of the change is difficult to overstate. First to file really must be interpreted as requiring inventors to file first before disclosing the invention. If you happen to disclose the invention before you file a patent application you really need to file fast – there is still some hope you can obtain a patent due to the presence of a grace period, but the grace period is very narrow and should not be relied upon.
For applications filed on or before March 15, 2013, first to file laws will apply. It is also possible that applications filed on or after March 16, 2013 will be examined under first to file laws as well, but if and only if all of the claims in the application are entitled to a priority date of March 15, 2013 or earlier.
So-called pre-AIA novelty law (i.e., the law applied for applications filed on or before March 15, 2013, or applications with all claims having priority on or before March 15, 2013) is rather peculiar at first glance. Not all references, knowledge or events that demonstrate an invention is “old” or already known can be used by patent examiners to reject a patent claim. Before we go to far down this path lets set some definitive rules:
- If the invention in question was described in a patent issued anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
- If the invention in question was described in a printed publication published anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
- If the invention were publicly known in the US, but not necessarily patented or published, prior to the patent applicant inventing it, then no patent can be obtained.
In each of these three cases we would say that the earlier reference or knowledge is prior art that prevents a patent from now issuing.
Now some more rules:
- If the invention in question was described in a patent issued anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
- If the invention in question was described in a printed publication published anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
- If the invention in question was publicly used in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
- If the device, machine or compound in question was offered for sale in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
In each of these four cases we would also say that the earlier reference, knowledge or event is prior art that prevents a patent from now issuing, but this time not because the invention was not new, but rather because an application was made in the US too late!
One of the biggest changes to U.S. patent laws brought about by the AIA relates to the move from a “first to invent” system to a “first inventor to file” system. Saying that we have a first to file system, however, might be a little misleading given that the term “first to file” has certain international meanings that do not apply.
A pure first to file system is one that demands absolute novelty in order to obtain a patent. A pure first to file system means that if there is a use, sale or publication of information relating to the invention prior to the filing of a patent application no patent can be obtained. This is not exactly what the U.S. first to file system mandates.
Inventors should start with the presumption that if there has been a disclosure of the invention prior to filing a patent application in the U.S. no patent can be obtained. However, if the disclosure of the invention was made by the inventor and occurs within 12 months of the filing of a patent application in the U.S. the disclosure can be removed as prior art. If the disclosure is by someone other than the inventor and that other, third party did not obtain the invention information from the inventor it may be impossible (and likely will be impossible) to remove the disclosure as prior art, which is why first to file rules must be interpreted as requiring inventors to file first!
Under the U.S. first to file system it is true that the inventor will still have a personal grace-period to remove their own disclosures. This personal grace-period says that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not capable of being used as prior art as long as they occurred within 12 months of the filing date of a patent application. However, and this is a very big however, disclosures of third-parties who independently came up with the invention information themselves will be used against the inventor unless the disclosure is of the same subject matter.
What does this mean? The Patent Office has given an example, using letters. Inventor discloses XY prior to filing a patent application. A third party obtains the XY disclosure and in turn discloses XYZ. The Patent Office explained that at least what is different – in this case Z – will be used as prior art against the inventor and cannot be removed as prior art.
It is difficult to come up with realistic hypothetical examples where the grace-period will likely be useful in an AIA universe. Inventors should, therefore, operate under the assumption that there will be virtually no chance that a grace-period will exist relative to third party, independently created disclosure. This is an enormous difference between the old law and the new law.
While it is true that some grace-period does remain, no one should rely on the grace-period. At best, the AIA 102 grace-period should be thought of as an possible way to address the mistake of not having filed first. The AIA 102 grace-period should never be relied upon before the fact by inventors. It is just too fragile.
For more information on patent basics please see:
- Investing in Inventing: A Patent Process Primer for Startups
- How to Write a Patent Application
- Filing a patent application is still a smart decision for inventors
- Inventorship 101: Who are Inventors and Joint Inventors?
- Patent Search 101: Why US Patent Searches are Critically Important
- 10 Critical Pieces of Advice for Inventors
- There is no such thing as a provisional patent
- Patent Searches: A Great Opportunity for Inventors to Focus on What is Unique
- Should I File a Patent Application Before Licensing the Invention?
- Can cake designs result in intellectual property protection?
- Turning Your Idea into an Invention
- Learning from common patent application mistakes by inventors
- Why Patent Attorneys Don’t Work on Contingency
- Patentability: The Adequate Description Requirement of 35 U.S.C. 112
- Germany Suspends Requirement of Presidential Signature for Formal Ratification of UPC Agreement
- Patentability: The Nonobviousness Requirement of 35 U.S.C. 103
- Patentability: The Novelty Requirement of 35 U.S.C. 102
- Patentability Overview: When can an Invention be Patented?
- Invention to Patent 101 – Everything You Need to Know to Get Started
- The Benefits of a Provisional Patent Application
- What is a Utility Patent?
- Do You Need a Patent?
- Inventing Strategy 101: Laying the Foundation for Business Success
- Patent Prosecution 101: Understanding Patent Examiner Rejections
- Patent Drafting for Beginners: The anatomy of a patent claim
- The Patent Process on a Tight but Realistic Budget
- Patent Drafting for Beginners: A prelude to patent claim drafting
- Provisional Patent Applications the Right Way, the Wal-Mart Way
- Inventing to Solve Problems
- 5 things inventors and startups need to know about patents
- The Quid Pro Quo – How Bad Patents Can Harm A Startup Company
- There is no such thing as a provisional patent
- What is a patent and where do patent rights come from?
- The Best Mode Requirement: Not disclosing preferences in a patent application still a big mistake
- First to File Means File First! The Risk of Not Immediately Filing a Patent Application
- PCT Basics: Obtaining Patent Rights Around the World
- Sell Your Ideas With or Without a Patent
- Understanding the Patent Law Utility Requirement
- Understanding Obviousness: John Deere and the Basics
- When should you do a Patent Search?
- Design Patents 101 – Protecting Appearance Not Function
- The Top 5 Mistakes Inventors make with their Invention
- Patent Searching 101: A Patent Search Tutorial
- Patent Strategy: Laying the Foundation for Business Success
- When Should a Do It Yourself Inventor Seek Patent Assistance?
- The Cost of Obtaining a Patent in the US
- An Inventor’s Guide to Being Taken Seriously by Patent Attorneys
- Plausibly estimating the market for your invention
- The Business Responsible Approach to Patents and Inventing
- A beginner’s guide to patents and the patent process