102 Pre- and post-

Question 1

Old 102(a)

Answer 1

1. Applicant cannot get a patent on something someone else provably invented first.
2. Proof must be:
   - Published documents or patents from anywhere around the world; or
   - The invention was known or used by other in the U.S. before your date of invention.

Question 2

Old 102(b)

Answer 2

Once the invention enters the public domain by the inventor’s or another’s action, the inventor has a one-year grace period within which to decide whether to file a patent application.

If the one-year period is passed, the inventor is barred from filing.

Public domain is defined as:
Published documents or patents anywhere in the world; or
Public use or sale in the U.S. only.

Question 3

Old 102(c)

Answer 3

You cannot patent something you have publicly stated that you have given up on.

Question 4

Old 102(e)

Answer 4

You cannot patent something someone else invented first (akin to 102(a)) if proof of the prior invention can be found in:

1. A previously filed and now issued, or published, US application that has a US filing date before your date of invention; and
2. Published PCT applications filed after 11/29/00, that designate the US and publish in English.

Question 5

Old 102(f)

Answer 5

You can only patent something that you have invented; cannot patent the work of another.

Question 6

Old 102(g)

Answer 6

USPTO only gives out one patent for each invention.

If two inventors claim the same invention, the PTO will conduct an “interference” to decide who invented first and award the patent to that person.

Question 7

New 102(a)(1)

Answer 7

You cannot file a patent application or something that is already provably in the public domain before you file.
Proof can be from anywhere in the world and includes:
1. Patents;
2. Printed publications;
3. Public use or sale; or
4. Otherwise in the public domain.

Question 8

New 102(a)(2)

Answer 8

You cannot file a patent application on something someone else filed before you filed.

The evidence of prior filing here is only in the form of published or issued US applications, with the prior art date set as the earliest effective filing date (foreign or domestic) of that patented or published application.

Question 9

New 102(b)(1)

Answer 9

Exceptions to 102(a)(1):
(b)(1)(A):
A disclosure made by the inventor, or a person who obtained the disclosure from the inventor, within one year of the filing date does not qualify as prior art.

(b)(1)(B):
If the subject matter of a third party’s disclosure, made within one year prior to filling, was made public by the inventor, or someone who obtained it from the inventor, before the third party’s disclosure thereof.

Question 10

New 102(b)(2)

Answer 10

(b)(2)(A):
A disclosure in a prior-filed published or issued US application is not prior art if the subject matter was obtained directly or indirectly from the inventor.

(b)(2)(B):
Subject matter disclosed in the prior, third-party-filed published or issued US application is not prior art if it was publicly disclosed, before the effective filing date of the third-party reference, by the inventor or another who had obtained the subject matter, directly or indirectly, from the inventor.

(b)(2)(C):
If the subject matter disclosed, and the claimed invention, in the prior-filed published or issued application, were commonly owned (or under an obligation of assignment) by the owner of the application currently being examined before the effective filing date thereof.

NOTE:
These exceptions only apply when you are within the one year grace period.

Question 11

New 102(c)

Answer 11

Joint ownership under a joint research agreement exists if:

The claimed invention was made by the parties to the agreement and the agreement was in effect before the effective filing date;
The invention resulted from activities within the scope of the agreement; and
The application discloses the names of the parties to the agreement.

Question 12

New 102(d)

Answer 12

The effective filing date is the actual filing date of the application unless:

i. There is a claim for priority, then the priority date is the effective filing date.