Pre-AIA

Question 1

102(a)

Answer 1

Before the invention thereof = novelty section
Conception = idea + game plan = date of invention
Reduction of practice = completed the invention or constructive is filing app with instructions to make invention.

• Known or used in the United States by other(s)
• Patented or published anywhere

Question 2

102(b)

Answer 2

Statutory Bar

*public use or sale in the U.S.
[public use more than mere knowledge, inventor allows someone to use invention without limits or restrictions]
*more than one year
*Patented or published anywhere

-Exception – experimental use
13 factors to determine if experimental use (2133 MPEP)
-Inventor’s consent is not required

Question 3

102(c)

Answer 3

Abandonment

Question 4

102(d)

Answer 4

Statutory bar - Foreign Filing [inventor filed in foreign patent but waited too long to file in U.S. patent]

To be barred from obtaining U.S. patent there is a 4 part test:

1. applicant must be the same on both foreign app and U.S.
2. Same invention on both foreign app & U.S.
3. Utility apps – foreign must be filed more than 12 mos prior to U.S. filing. 6 months for design
4. Foreign app must mature to issued patent prior to U.S. filing

Question 5

102(e)

Answer 5

102(e) Date

section is about determining a winner
date filed as a priority date (even tho it’ll be secret for 18months until issued)
Can’t use U.S. filing as prior art against others until published or issued

*filing date is prior art date (102(e) date)
not beneficial for you but makes it harder for others

Question 6

102(f)

Answer 6

[f is for fraud]

*can’t get a patent if you did not invent the subject matter. Can’t steal someone else’s work

Question 7

102(g)

Answer 7

Interference practice

• if invention has been abandon, concealed or suppress it is NOT prior art
• Ex parte – something occurs in U.S.

Interference – conception, reduction to practice, reasonable diligence
party who is claiming 1st to invent is the party who filed 2nd. 1st party is the senior party and has benefit of the doubt. To prove 2nd party was 1st to invent must show conception started the day before the senior party and continued straight through with no interruptions until reduction of practice

Question 8

Old 102

Answer 8

First to Invent standard

AIA is first to file