Chapter §7.01 Statutory Basis: 35 U.S.C. §102 (2006)

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§7.01 Statutory Basis: 35 U.S.C. §102 (2006)

This chapter explains the multifaceted concepts of novelty, loss of right, and priority as defined by §102 of the U.S. Patent Act.6. The notion that patents are available only for inventions that are truly novel (i.e., new) is a bedrock concept of all patent systems. What is novel, however, is not uniformly defined around the world. The United States historically analyzed novelty quite differently than other countries because of its unique "first-to-invent" priority system.7

The Patent Act provides:

§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; 8 or
(f) he did not himself invent the subject matter sought to be patented, or
(g) (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. 9

Deceptively straightforward at first reading, when applied the seven subsections (a) through (g) of 35 U.S.C. §102 (2006) resemble a Pandora's box of arcane conventions and obscure terms of art. Fortunately, the complexities of §102 can be mastered by a careful examination of the statutory provisions, a thorough comprehension of fundamental principles and underlying policy concerns, and the precise use of terminology.

Virtually every word in §102 has an interpretation informed by case law and patent practice. The statute cannot be interpreted in a vacuum; it must be understood in connection with the many judicial decisions and rules of practice that have applied the language of the statute to a multitude of factual situations.

The remainder of this section, as well as sections 7.02 through 7.04 of this chapter, examine concepts and terminology that apply generally to multiple subparagraphs of §102. The remaining sections of the chapter address issues relating to each individual subsection of 35 U.S.C. §102 (2006).

[A] Burden of Proof on USPTO

The preamble of 35 U.S.C. §102 places a burden of proof on the USPTO to negate a presumption of novelty: "A person shall be entitled to a patent unless—. . . ." (emphasis added).10 The statute is drafted to indicate that the initial burden of disproving novelty during examination of a patent application rests with the government—the USPTO.

The preamble phrase of 35 U.S.C. §102 (2006) is rather overstated, in that to be "entitled to a patent" an applicant must claim an invention that is not only novel, but that also complies with the Patent Act's additional requirements of statutory subject matter,11 utility,12 and nonobviousness.13 Moreover, the invention must be disclosed and claimed in a patent application that passes muster under the requirements of 35 U.S.C. §112.14 These additional requirements are detailed elsewhere in this treatise.

The quantum of evidence required for the USPTO to meet its burden of disproving novelty under §102 when rejecting the claims of a patent application is a "preponderance of the evidence" burden.15 This is a lesser quantum of evidence than the "clear and convincing" evidence required to rebut the presumption of validity of an issued patent under 35 U.S.C. §282. In civil litigation, a "preponderance of the evidence" burden of proof is generally considered satisfied if more than half (50%+) of the weight of the evidence supports the proponent's contention or position.

More specifically, the USPTO examiner bears an initial burden of presenting at least a prima facie case of anticipation.16 If (and only if) the examiner meets that burden, then the burden of going forward (i.e., burden of production) shifts to the patent applicant.17 Once the examiner has established a prima facie case and the applicant has submitted any rebuttal evidence, the ultimate question becomes whether, based on the totality of the evidence, the examiner has carried his burden of proof by a preponderance of the evidence.18

[B] Claim Interpretation in USPTO

When the USPTO examines a patent application, the examiner will compare the applicant's claims against the prior art to determine whether the grant of a patent is warranted. To conduct his examination, the examiner first needs to understand what the words in the applicant's claims mean.19 This process of "claim interpretation" or "claim construction"20 cannot be conducted by looking solely at the claim language, divorced from the context of the patent application in its entirety.21

For purposes of ex parte patent examination, the USPTO follows a "broadest reasonable interpretation" rule.22 This rule assigns terms in patent claims their broadest reasonable interpretation, consistent with the specification as it would be understood by a person having ordinary skill in the art to which the invention pertains (the hypothetical PHOSITA).23 The broadest reasonable interpretation rule is consistent with the USPTO's Rule 75(d)(1), which provides that patent application claims must "conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description."24

In 2016, the Supreme Court approved the USPTO's extension of the "broadest reasonable construction" standard to the AIA-implement inter partes review (IPR) proceeding, even though opportunities for amending claims in IPRs had (at least at that time) been quite limited. The Court's important decision in Cuozzo v. Lee25 is detailed infra.26

[C] Prior Art as Defined by §102

Section 102 of Title 35 U.S.C. represents the catalog or universe of prior art that potentially can be cited by the USPTO in rejecting a patent applicant's claims. If a patent, published patent application, journal article, other document, or event is stated by the USPTO to be prior art, it must qualify under some subsection of 35 U.S.C. §102. This means that the document or event in question satisfies all the temporal, geographic, and other substantive standards set forth in the pertinent statutory subsection, as discussed below. If the document or event does not meet all such standards, then it is not legally available for use as prior art to negate the presumed novelty of the applicant's claimed invention. The same is true in a litigation context, where the presumptive validity of an issued patent is being challenged.

To reject an applicant's patent claim(s) under 35 U.S.C. §102, the USPTO must show that at least one of the statute's novelty-destroying or loss of right subsections (a) through (g) has been triggered. The USPTO examiner typically rejects an applicant's claims for anticipation or statutory bar (under any part of §102) based on the citation of a single prior art "reference,"27 which is a document such as a patent, an article from a scientific journal, or other technical literature that evidences the applicability of one or more subsections of §102.28 Claims also may be rejected under certain subsections of §102 based on events, such as a placing of the invention "on sale" or in "public use" in the U.S. within the meaning of §102(b).

[D] Lack of Novelty Versus Loss of Right

Section 102 is really two provisions in one, as reflected by its title: "Conditions for patentability; novelty and loss of right to patent." Subsections (a), (e), and (g) are true novelty provisions, while subsections (b), (c), and (d) concern loss of right situations in which the right to a patent may be forfeited by delay in filing a patent application even though the invention was, technically, novel, when it was invented. Subsection (f) is sui generis and does not comfortably fit in either category.29

The fundamental difference between the novelty and loss of right...

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