Patent Law Flashcards
Old 102(a)
-can’t get a patent on something someone else probably invented first
-proof accepted by PTO:
~published docs/patents (from anywhere in the world) OR
~the invention was already known/used by others (in US only) before your date of invention
Old 102(b)
- once invention is in the “public domain” by the inventor’s/another’s actions, the inventor has 1 yr grace to file patent
- if 1 yr grace passes, inventor is barred from filing
- “public domain” is published docs/patents (from anywhere), or public use/sale (in US only)
Old 102(c)
-can’t patent something that you, personally, have publicly stated you have given up on
Old 102(d)
-can start the patent process outside the US, but once 1 yr has passed from the foreign filing date, you are at risk of being barred from filing in the US if the foreign patent issues
Old 102(e)
-can’t patent something someone else invented first (similar to 102(a))
~if proof of prior invention found in a previously filed/issued/published US application that has a US filing date before your date of invention
>also applies to published PCT applications filed on/after 11/29/00 that designate the US and publish in English
Old 102(f)
-can only patent what you invented; can’t patent the work of another
Old 102(g)
-USPTO will only give one patent for each invention
~if more than one inventor claims the same invention, the PTO will conduct an “interference” to decide who truly invented first + will award to that inventor
Prior Art New 102(a)(1)
-can’t file a patent application on something that is already provably in the “public domain” before you file
~proof can be patents/printed publications/public use or sale/otherwise in the “public domain” anywhere in the world
Prior Art New 102(a)(2)
-can’t file a patent application on something someone else filed before you filed
~proof of prior filing is ONLY in the form of a previously filed, published, or issued US application w/ the prior art date set as the earliest effective filing date (foreign/domestic) of that patented/published US application
Exceptions to Prior Art
>New 102(a)(1)
New 102(b)(1)(A)
-a disclosure made by the inventor/person who obtained the disclosure from inventor, w/in 1 yr of the filing date does not constitute prior art
Exceptions to Prior Art
>New 102(a)(1)
New 102(b)(1)(B)
-not prior art if the subject matter of a 3rd party’s disclosure, w/in 1 yr of filing, was made public by the inventor/someone who obtained it from the inventor, before the 3rd party disclosure
Exceptions to Prior Art
>Exceptions to 102(a)(2) disclosures in prior-filed published/issued US applications:
New 102(b)(2)(A)
-a disclosure in a prior-filed published/issued US application is not prior art if the subject matter was obtained directly/indirectly from the inventor
Exceptions to Prior Art
>Exceptions to 102(a)(2) disclosures in prior-filed published/issued US applications:
New 102(b)(2)(B)
-similar to new 102(b)(2)(A), subject matter disclosed in the prior, 3rd-party-filed published/issued US application is not prior art if it was first publicly disclosed, before the effective filing date of the 3rd-party, by the inventor/another who had obtained the subject matter directly/indirectly from the inventor
Exceptions to Prior Art
>Exceptions to 102(a)(2) disclosures in prior-filed published/issued US applications:
New 102(b)(2)(C)
-not prior art (similar to 102(b)(2)(A) + 102 (b)(2)(B)) if subject matter disclosed, and claimed invention in the prior-filed published/issued US application, were commonly owned/under assignment obligation by the owner of the application currently being examined before the effective filing date thereof
Common Ownership Under a Joint Research Agreement
Joint ownership under a joint research agreement if:
New 102(c)(1), 102(c)(2), + 102(c)(3)
102(c)(1)
-the claimed invention was made by parties to the agreement and the agreement was in effect before the effective filing date
102(c)(2)
-the invention resulted from the activities within the scope of the agreement
102(c)(3)
-the application discloses the names of the parties to the agreement
