Let's talk about 35 USC 102. If you have experience with patents you may already understand the concept of novelty and therefore may not need to read this. I have found though that novelty as defined by United States Patent Law is confusing to most people. There is a good reason it is confusing - it was written by Congress.
I will try to explain 35 USC 102 in good English (O.K. - maybe Texan) below, but first let me show you the actual law. It is from 35 USC (United States Code). In the many United States codes 35 is the one for patent law. The particular section from 35 USC is section 102, thus 35 USC 102.
Please note - everything in the discussion below is about novelty as understood before the America Invents Act (AIA).
35 USC 102. CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO PATENT
A PERSON SHALL BE ENTITLED TO A PATENT UNLESS—
(A) THE INVENTION WAS KNOWN OR USED BY OTHERS IN THIS COUNTRY, OR PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY, BEFORE THE INVENTION THEREOF BY THE APPLICANT FOR PATENT, OR
(B) THE INVENTION WAS PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY OR IN PUBLIC USE OR ON SALE IN THIS COUNTRY, MORE THAN ONE YEAR PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THE UNITED STATES, OR
(C) HE HAS ABANDONED THE INVENTION, OR
(D) THE INVENTION WAS FIRST PATENTED OR CAUSED TO BE PATENTED, OR WAS THE SUBJECT OF AN INVENTOR’S CERTIFICATE, BY THE APPLICANT OR HIS LEGAL REPRESENTATIVES OR ASSIGNS IN A FOREIGN COUNTRY PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THIS COUNTRY ON AN APPLICATION FOR PATENT OR INVENTOR’S CERTIFICATE FILED MORE THAN TWELVE MONTHS BEFORE THE FILING OF THE APPLICATION IN THE UNITED STATES, OR
(E) THE INVENTION WAS DESCRIBED IN - (1) AN APPLICATION FOR PATENT, PUBLISHED UNDER SECTION 122(B), BY ANOTHER FILED IN THE UNITED STATES BEFORE THE INVENTION BY THE APPLICANT FOR PATENT OR (2) A PATENT GRANTED ON AN APPLICATION FOR PATENT BY ANOTHER FILED IN THE UNITED STATES BEFORE THE INVENTION BY THE APPLICANT FOR PATENT, EXCEPT THAT AN INTERNATIONAL APPLICATION FILED UNDER THE TREATY DEFINED IN SECTION 351(A) SHALL HAVE THE EFFECTS FOR THE PURPOSES OF THIS SUBSECTION OF AN APPLICATION FILED IN THE UNITED STATES ONLY IF THE INTERNATIONAL APPLICATION DESIGNATED THE UNITED STATES AND WAS PUBLISHED UNDER ARTICLE 21(2) OF SUCH TREATY IN THE ENGLISH LANGUAGE; OR
(F) HE DID NOT HIMSELF INVENT THE SUBJECT MATTER SOUGHT TO BE PATENTED, OR
(1) DURING THE COURSE OF AN INTERFERENCE CONDUCTED UNDER SECTION 135 OR SECTION 291, ANOTHER INVENTOR INVOLVED THEREIN ESTABLISHES, TO THE EXTENT PERMITTED IN SECTION 104, THAT BEFORE SUCH PERSON’S INVENTION THEREOF THE INVENTION WAS MADE BY SUCH OTHER INVENTOR AND NOT ABANDONED, SUPPRESSED, OR CONCEALED, OR
(2) BEFORE SUCH PERSON’S INVENTION THEREOF, THE INVENTION WAS MADE IN THIS COUNTRY BY ANOTHER INVENTOR WHO HAD NOT ABANDONED, SUPPRESSED, OR CONCEALED IT. IN DETERMINING PRIORITY OF INVENTION UNDER THIS SUBSECTION, THERE SHALL BE CONSIDERED NOT ONLY THE RESPECTIVE DATES OF CONCEPTION AND REDUCTION TO PRACTICE OF THE INVENTION, BUT ALSO THE REASONABLE DILIGENCE OF ONE WHO WAS FIRST TO CONCEIVE AND LAST TO REDUCE TO PRACTICE, FROM A TIME PRIOR TO CONCEPTION BY THE OTHER.
There you have it. 35 USC 102. Now let's see if we can figure out what it means. The first thing to notice is that it is all written in the negative - telling us what will keep you from getting a patent. The key phrase is the first one that says " A person shall be entitled to a patent unless...". And the key word is "unless".
Let's look first at part a):
35 USC 102(a) THE INVENTION WAS KNOWN OR USED BY OTHERS IN THIS COUNTRY,OR PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY, BEFORE THE INVENTION THEREOF BY THE APPLICANT FOR PATENT
First - you will not be granted a patent if your invention was known (usually in written form) or used (practiced) by others in this country.
There are several key words here - "others" means other than you. If you wrote about it or practiced it you still might be able to get a patent (maybe). But if others wrote about it or practiced it you are out of luck. Notice also the phrase "in this country". If your invention was practiced by others in a foreign country you might still be able to get a patent.
But if it was either patented or described in an printed publication in either this or a foreign country before your invention, then no. In general, when they talk about something in a printed publication they mean a publication available to the public. If the publication is maintained as confidential within your company it is not public. At the other extreme, if your invention was published in an obscure scientific journal in Macedonia and never translated into any other language it is public. The other important word to understand here is "invention". Your invention is what you are explicitly claiming in your patent claims. And when it says "before the invention" it is referring to date at which you can prove you invented. This may in fact be earlier than your filing date (if you can prove it with written records).
O.K. - that was (a). If you don't have a headache yet - it gets more complicated.
35 USC 102(b) THE INVENTION WAS PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY OR IN PUBLIC USE OR ON SALE IN THIS COUNTRY, MORE THAN ONE YEAR PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THE UNITED STATES
I mentioned in 35 USC 102(a) that you might be O.K if you are the one who disclosed or used the invention. Part (b) is a description of what is called the one-year grace period in the United States. This is a statutory one year bar - if your invention was either patented or described in a printed publication anywhere in the world (even by you) more than a year before you apply (file) for a patent then you are barred from getting a patent on it. And if was in public use or for sale in this country (even by you) more than a year before you filed you are barred. Note that in (a) the key date is the date of invention - in (b) it is the date of filing.
You may wonder what "public use" and "on sale" means. You are in good company. I do not intend to get into those in detail here because there is a lot of case law involved. Let's leave it that a proper test for public use has been defined as whether the purported use: (1) was accessible to the public; or (2) was commercially exploited. As you can see - this can get subjective. As to "on sale" on sale bar is generally triggered if the invention is both (1) the subject of a commercial offer for sale not primarily for experimental purposes and (2) ready for patenting.
Enough - the next one looks simpler:
35 USC 102(c) HE HAS ABANDONED THE INVENTION
I need to put this one in a little context first. In about 12 years of dealing with patent validity issues I have never had to deal with abandonment - it is simply rare. But you need to understand what it is.
Actual abandonment under 35 USC 102(c) requires that the inventor intended to abandon the invention, and intent can be implied from the inventor's conduct with respect to the invention. It requires a deliberate, though not necessarily express, surrender of any rights to a patent. To abandon the invention the inventor must intend a dedication to the public. Such dedication may be either express or implied, by actions or inaction's of the inventor. Delay alone is not sufficient to infer the requisite intent to abandon.
You can probably see the problem here. This can be a rather subjective judgment. Enough said.
Now let's get into some real lawyer talk - part (d)
35 USC 102(d) THE INVENTION WAS FIRST PATENTED OR CAUSED TO BE PATENTED, OR WAS THE SUBJECT OF AN INVENTOR’S CERTIFICATE, BY THE APPLICANT OR HIS LEGAL REPRESENTATIVES OR ASSIGNS IN A FOREIGN COUNTRY PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THIS COUNTRY ON AN APPLICATION FOR PATENT OR INVENTOR’S CERTIFICATE FILED MORE THAN TWELVE MONTHS BEFORE THE FILING OF THE APPLICATION IN THE UNITED STATES
O.K. - take a deep breath. This one has four requirements which, if all are present, establish a bar against you getting a patent.
First - if you or someone who represents you has filed a foreign application on your invention more than 12 months before your effective U.S. filing date.
Second - the foreign application must have been filed by the same applicant as in the United States.
Third - the foreign patent must be granted before the U.S. filing date. It need not be published.
Fourth - the same invention must be involved.
This becomes a statutory bar - like 102(b).
If you did not file your application in a foreign country first you do not have to worry about this one. If you did get some good advice from your friendly patent practitioner.
Now it gets a little worse with Section 102(e):
35 USC 102(e) THE INVENTION WAS DESCRIBED IN:
35 USC 102(e) is sometimes referred to as the submarine provision. It is referring to prior art in pending US patent applications that, when published or patented, suddenly become prior art as of their filing date. So you are entitled to a patent unless.... there is an unpublished patent that you could not possibly know about lurking under the surface. Remember, under Section 122(b) patent application are maintained in secret by the patent office for 18 months after their priority date.
That may sound straightforward but 102(e) gets quite complicated when the patent application in question comes in to the United States from abroad. I will not get into that in this article.
But one other aspect of 35 USC 102(e) needs to be addressed. What if the submarine in question is a provisional submarine?
The next one 102(f) sounds easier to understand:
35 USC(f) HE DID NOT HIMSELF INVENT THE SUBJECT MATTER SOUGHT TO BE PATENTED
35 USC 102(f) simply states that if an applicant derived his invention from someone else he is not the inventor. As you can imagine, this is another subjective thing. Many inventors work in a collaborative environment and make use of what they learn from others. The judgment here is not whether the applicant learned anything from another but whether he learned the complete system necessary for the invention. It is recognized that inventors often get suggestions from others that help them in their inventive process.
And finally, the last part of Section 102:
35 USC 102(g)
35 USC 102(g) is the basis of interference practice in the USPTO. While much is written about it - interference practice is actually quite rare. But you should understand the basic aspects of it. The United States is not a first-to-file country - it is a first to invent country. Therefore if another inventor can establish that before the applicant invented, he invented, then the applicant loses. Proof of this in interferences then often hinges on what kind of documentation each inventor can show that can establish a date of invention. This is the driving force for recommendations to all inventors that they use disciplined practices of recording their work in inventors notebooks that are regularly signed and witnessed.
These recommendations are important and I completely agree with them. I must admit however that as a Vice president of Research in a large corporation with many (>700) researchers and many patents per year - I cannot recall ever dealing with an interference. I still strongly believe in inventors notebooks though because I think they help researchers keep track of all of their ideas.
Well that is 35 USC 102. As a businessperson or an inventor you do not have to have it committed to memory. But understanding novelty generally is important.
Later we will get to 35 USC 103 - Non-Obviousness.