Statutes

Question 1

35 USC 101

Answer 1

Inventions Patentable.

• Invents or Discovers;
• New and Useful;
• PMMC;
• New and Useful Improvement Thereof

Question 2

35 USC 102(a)(1)

Answer 2

Entitled to a patent unless…

…before the EFD…

• Patented
• Described in a Printed Publication
• In Public Use
• On Sale
• Otherwise available to the public

Question 3

35 USC 102(a)(2)

Answer 3

Entitled to a patent unless…

…another inventor…
…before the EFD…

• Described in an issued patent (151)
• Described in an published application (122(b))

Question 4

35 USC 102(b)(1)(A)

Answer 4

Exception - Disclosure 1 year or less before EFD of claimed invention by

• Inventor
• Joint Inventor
• Another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor

Question 5

35 USC 102(b)(1)(B)

Answer 5

Exception - Disclosure 1 year or less before EFD of claimed invention if

• inventor/joint/another disclosed prior to TP disclosure

Question 6

35 USC 102(b)(2)

Answer 6

Disclosures Appearing in Applications and Patents

Not Prior Art if

(A) obtained form inventor/joint

(B) prior public disclosure by inventor/joint

(C) disclosed SM owned by same person or subject to obligation of assignment to same person not later than EFD

Question 7

35 USC 102(c)

Answer 7

Common Ownership Under Joint Research Agreements

Elaborates on “owned by same person or subject to assignment” under 102(b)(2)(C)

Question 8

35 USC 102(d)

Answer 8

Patents and Published Applications Effective as Prior Art

(1) Actual Filing date if (2) doesn’t apply
(2) Priority date under 119, 365(a),(b), 387(a),(b)

Claim of benefit under 120, 121, 365(c), 386(c)

Question 9

Pre-AIA 102(a)

Answer 9

Entitled to patent unless…

…before invention…

• Known or used by others (US)
• Patented
• Described in printed publication

Question 10

Pre-AIA 102(b)

Answer 10

Entitled to patent unless…

…more than 1 year prior to date of application…

• Public use or on sale (US)
• Patented
• Described in printed publication

Question 11

Pre-AIA 102(c)

Answer 11

Entitled to patent unless…

Abandoned the invention

Question 12

Pre-AIA 102(d)

Answer 12

Entitled to patent unless…

• Foreign application filed more than 12 months before filing
• Granted patent or inventor’s certificate
• Same inventor
• Same invention

Question 13

Pre-AIA 102(e)

Answer 13

Entitled to patent unless before invention…

…described in…

(1) Published application by another in US
(2) Granted patent by another in US

Question 14

Pre-AIA 102(f)

Answer 14

Entitled to patent unless…

did not himself invent the SM

Question 15

35 USC 103

Answer 15

May not obtain patent if differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the EFD to a person having ordinary skill in the art to which the claimed invention pertains.

• Before invention pre-AIA

Question 16

35 USC 112(a)

Answer 16

Written Description
-making and using

Enablement

• full, clear, concise, exact terms
• enable any person skilled in the art to which it pertains

Best Mode

Question 17

35 USC 112(b)

Answer 17

Definiteness

“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention”

Question 18

35 USC 112(f)

Answer 18

Means or Step-for

“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of the structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”