Sections 101, 102, 103 and 112 of 35 USC

102(b)

- Done by Anyone (including Applicant) - One year before the US FD, the invention was: - In public use or on sale in this country. - Does not include secret activities by 3rd parties. - Experimental process okay. - Marketing and ads is not.

How many subsections are in section 102?

8

102(c)

Abandonment of invention by the inventor. - Need: - Some kind of public expression indicating that the inventor has abandoned the invention. **Abandonment of invention != Abandonment of Application**

What is KSR?

Another obviousness test.

What are the 2 Statutory Bar sections of 102?

BD (USFD) - has to do with the US Filing Date.

Combinations of or substitutes in prior art are patentable if...

the combination or substitutions results that are not obvious or predictable from the prior art.

Conception:

- Conception means that the invention is sufficiently clear enough to enable someone skilled in the art to RTP without excessive experimentation. - Inventor does not need to know that the invention will actually work for there to be conception - just needs a definite and permanent idea of the complete and operable invention.

102(g)

- By Others - Before the Date of Invention, the invention was made in the US by another who did not abandon, suppress or conceal.

102(d)

- Done by Anyone (including Applicant) - One year before the US FD: - A foreign application was filed describing the invention; AND - The foreign patent was granted. (If you apply for a foreign patent & then wait too long to apply for a US patent on the same invention, then you will be barred from obtaining the US Patent)

102(a)

- Done by Others (not applicant) - Before the date of invention (FD), the invention was: - Publicly known or used in USA; or - Described in a patent or printed publication anywhere in the world (can also be video or mp3).

102(e)

- Done by Others (not applicant) - The same invention is described in a US Patent or published US application to another having a US Filing Date before the Applicant's DOI. - Applicant's DOI is after the US FD of the patent/published application in progress/published PCT app filed after 11/29/00, in English, and designates the US. **The same invention is described in a patent granted on a patent application of another before your DOI**

102(g)(1): Abandonment

- Failure to pursue an invention diligently can lead to a finding of abandonment under 102(g).

102(g)(2): Ex-Parte Rejection

- If a third party can show that they made the invention first and followed through on it diligently, a patent can still be precluded under 102(g)(2) if: - The subject matter at issue has been actually reduced to practice by another before the applicants invention. - No abandonment, suppression or concealment. **The first party to RTP will be the party to obtain a patent, unless the other was First to Conceive and Later RTP with diligence.

102(g)(1): Concealment:

- If you have been holding a trade secret & you are seeking a patent, you can't.

102(g)(1): Suppression

- The Inventor has held the invention from disclosure to the public, even if donor legitimate reasons.

35 USC 120 - Domestic, Non-provisional Priority (Continuations, Divisionals, CIP)

1. Application one is filed. 2. Continuation, divisional or CIP is filed, getting the FD of the first application. 3. Application one is then abandoned.

Reduction to Practice: Type Types

1. Constructive 2. Actual.

So what are the seven rationales upon which an invention can be considered unpatentable due to obviousness?

1. Invention is a combination of at least two existing pieces of prior art, and the combination is something that one with ordinary skill & creativity could predict the resulting function. 2. Substitution of one known element for another to obtain predictable results. 3. Prior art includes a comparable invention similarly improved, and ordinary skill would include knowledge of the known improvement technique. 4. Applying a known technique to a known device ready for improvement to yield predictable results. 5. Obvious to try - see 3 prongs of KSR 6. When one of ordinary skill would know of an analogous device/product/method in another field, and design incentives or market forces would make it obvious to use elements of the analogous invention and the variation yields a predictable outcome. 7. Some teaching, suggestion or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

102(d) Requirements that would bar patentability if met: (List 4)

1. Must be the same applicant (inventor or legal representative) on both the US Filing & Foreign Filing. 2. The invention in the US and Foreign Filing must be the same invention. 3. The foreign filing must be filed more than one year before the US Filing date. 4. The foreign patent is issued before the US FD, though not necessarily published.

List the Graham Factors:

1. Prior art - compare the invention to the prior art. 2. Level of ordinary skill in the field - the fact that the improvement is not obvious to a layperson will not preclude a patent if the subject matter of the invention is beyond the skill of the average person. 3. Secondary considerations (likely non-obvious if): - it meets with great commercial success. - there was a long felt need in the art. - there was a failure of others to fix the problem.

What are the three prongs of the KSR?

1. There must be a recognized problem in the prior art/a design need or market pressure to solve a problem. 2. There is a finite number of predictable solutions in the prior art. 3. The application of the solution from other art to solve this recognized problem is obvious to someone with ordinary skill.

What three requirements must be met to establish prima facie case of obviousness using the TSM Test?

1. There must be some suggestion that the various elements of the prior art could be combined 2. There must be a reasonable expectation of success. 3. The prior art reference (or references when combined) must teach or suggest ALL of the claim limitations.

If you get to a question that has to do with a claim being anticipated (every element in the claim is the same as the prior art reference) by a prior art, then what section does this have to do with? a) 101 Patentability (usefulness) b) 102 Novelty c) 103 Non-obvious

102 Novelty

What are the 6 Novelty sections of 102? (Think Greek Yogurt)

FAGE (DOI) - 'AGE' all have to do with Date of Invention.

What are the Graham Factors? (Definition)

Factual inquiries for obvious analysis under 103.

35 USC 119(e) - Domestic Provisional Priority

If there is a provisional app filed AND a new patent app filed, BOTH which include the same inventor(s) & the new patent is disclosed in the provisional (fee is paid), then the new patent app will get the first filing date IF: - the new patent is filed within 12 months - the new patent app contains or is amended to contain a specific reference to the provisional.

102(g) is primarily used for:

Interference cases, where two or more different inventors are applying at the same time for the same invention.

What are examples of things that are NOT statutory subject matter?

Mathematical formulas, atomic weapons, principles of science, and naturally occurring things.

Does an assignment of the invention (when money is received as a result of the agreement) considered a sale that would bar patentability by 102(b)?

No.

Does the grant of a license to invention constitute an on-sale bar on patentability by 102(b)?

No.

The subsections in section 102 are all of two different categories. What are these two categories?

Novelty sections & Statutory bars.

What does section 102 have to do with?

Novelty.

What does section 103 have to do with?

Obviousness.

What does section 101 have to do with?

Patentability

What counts as statutory subject matter?

Process, machine, manufacture, composition of matter or improvement thereof.

102(e) matters for others, not the patentee.

The 102(e) date is used to determine only whether the patent or patent application can be used against someone else.

How is KSR different from the TSM and Graham factors?

The KSR has a different standard -- the "obvious to try" test. - If one of ordinary skill could have predicted the result of a combination of prior art, then the combination is obvious and not patentable.

Prima Facie Case of obviousness can be determined using the ___ Test.

The TSM Test (Teaching-Suggestion-Motivation Test)

102(f)

The inventor did not invent the subject matter sought to be patented.

35 USC 119 - Foreign Priority

To get the benefit of a foreign filing date, you need to file in the US within 12 months of the EARLIEST foreign filing date.

True or False: 103 requires that obviousness is evaluated at the time of the invention - No hindsight is allowed in the obviousness analysis.

True.

Actual RTP:

When the claimed invention is actually made and works for its intended purpose.

Constructive RTP:

When the patent application on the claimed invention is filed.

If the offer of sale was not made by the inventor or made without the inventor's consent, does the 102(b) bar still stand?

Yes.

If there is any offer (successful or not) of sale while the invention is complete and ready for patenting, is the applicant barred by 102(b)?

Yes.

Does the novelty sections have to do with: a) Another person has done something before you; or b) Anyone - including the applicant - has done something to bar the action.

a) Another person has done something before you.