Chapter §7.05 Anticipation Under §102(a)

• Jurisdiction: United States

§7.05 Anticipation Under §102(a)

Section 102(a), the first of the several novelty-destroying subsections of 35 U.S.C. §102 (2006), provides that a person shall be entitled a patent unless "the [claimed] 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. . . ."²¹⁰ Section 102(a) thus identifies three categories of patent-defeating events—namely, knowledge/use, patenting, or description in a printed publication of the same invention that is now sought to be patented—that will anticipate if the event occurred before the invention date of the claimed invention. The details of each of these §102(a) events are discussed separately below.

The common thread is that the §102(a) event must have occurred before the invention date of the subject matter claimed by the patent applicant. In the United States' pre-AIA first-to-invent system, novelty is measured at the invention date. The existence of a §102(a) event means that the invention was already in the public's possession when the patent applicant invented it. The public's prior possession of the invention is inconsistent with the requirement that the applicant seeking a patent was the first to invent the claimed subject matter.

[A] Filing Date as Prima Facie Invention Date

When a patent applicant files an application with the USPTO, the application typically does not provide (nor does the USPTO require) any information about when the inventor actually invented (i.e., actually reduced to practice, and/or mentally conceived and thereafter diligently worked toward a reduction to practice of) the invention claimed in the patent application. Therefore the USPTO treats the applicant's filing date as her presumptive invention date for purposes of applying 35 U.S.C. §102(a) (2006).²¹¹ The USPTO's practice is based on the theory that the filing of a patent application that properly supports the claims in a §112 sense is a constructive reduction to practice of the claimed invention.²¹² In other words, the USPTO takes the application's filing date as the prima facie invention date of the invention claimed therein. This date will be relied on by the USPTO in applying §102(a) prior art, unless the applicant can prove an earlier invention date.²¹³

[1] References Having Effective Date Less Than One Year Before Applicant's Filing Date

The USPTO typically rejects under 35 U.S.C. §102(a) (2006) when it identifies a printed publication, authored by someone other than the applicant, which was published less than one year before the applicant's filing date. More particularly, USPTO policy is that "[a] prima facie case is made out under 35 U.S.C. 102(a) if, within 1 year of the filing date, the invention . . . is described in a 'printed publication' whose authorship differs in any way from the inventive entity [named as the inventor(s) on the application] . . . ."²¹⁴

The USPTO's policy requirement that the authorship of a §102(a) prima facie reference be different from the inventive entity²¹⁵ named on the patent application under examination reflects the fact that a §102(a) event must involve an act (i.e., publication, patenting, knowledge/use) by someone other than the applicant.²¹⁶

[2] Antedating a Putative Prima Facie §102(a) Reference by Establishing an Earlier Invention Date

[a] Generally

A patent applicant may eliminate what appears to be a §102(a) anticipatory reference authored by another by establishing an invention date earlier than the effective date of the reference. In other words, the applicant must show that she, rather than the author of the reference or the third party whose work is being described therein, was the first to invent the claimed subject matter. The applicant's assertion of invention date-based novelty rights is known in patent practice as "antedating," "swearing behind," or "swearing back of" the reference.²¹⁷ The procedure for antedating a reference in ex parte prosecution is detailed in the USPTO's Rule 131.²¹⁸

Substantively, the antedating process follows the basic time-wise priority rule set forth in 35 U.S.C. §102(g) (2006).²¹⁹ The applicant must submit factual evidence that establishes a date of invention before the effective date of the reference. The applicant may make this showing by establishing either (1) an actual reduction to practice of the claimed invention prior to the effective date of the reference, or (2) conception of the claimed invention prior to the effective date of the reference plus diligence from [at least] just before the effective date of the reference until the applicant's filing date.²²⁰ The concepts of reduction to practice, conception, and diligence are discussed in further detail infra in connection with 35 U.S.C. §102(g) (2006).²²¹

A patent applicant may attempt to antedate or swear behind prior art when faced with a USPTO rejection under either §102(a) or §102(e).²²² Antedating of statutory bar references is not permitted, however.²²³ When a statutory bar has been triggered, the underlying policy prohibiting excessive delay in filing a patent application once an invention has been injected into the public domain trumps the first-to-invent principle. In other words, even though the applicant for patent may truly have been the first to invent the claimed invention, if that invention was patented or described in a printed publication anywhere in the world more than one year before the applicant filed for his U.S. patent, or if the invention was put into public use or on sale in the United States more than one year before the applicant filed for his U.S. patent, he has lost his right to a patent and cannot rely on his invention date-based rights to remove the statutory bar prior art.²²⁴

Nor can antedating be used where the prior art reference is a U.S. patent or published patent application of another that claims the same patentable invention. In such a case the basis of the rejection would be 35 U.S.C. §102(g)(1) (2006), and the applicant may suggest an interference.²²⁵

Lastly, although the USPTO in ex parte prosecution rarely cites evidence that another previously made the applicant's invention in this country under 35 U.S.C. §102(g)(2) (2006),²²⁶ if such a rejection was entered the applicant could not overcome it by attempting to antedate the §102(g)(2) evidence. This is because

subject matter which is available under 35 U.S.C. 102(g) by definition must have been made before the applicant made his or her invention. By contrast, references under 35 U.S.C. 102(a) and (e), for example, merely establish a presumption that their subject matter was made before applicant's invention date. It is this presumption which may be rebutted by evidence submitted under 37 C.F.R. 1.131. ²²⁷

[b] Relying on Inventive Activity Outside the United States Under 35 U.S.C. §104

Because of the United States' participation in certain multinational treaties and agreements dealing with intellectual property, an inventor seeking to antedate a prior art reference under USPTO Rule 131 (or a patentee facing a validity challenge in litigation over an issued patent) may rely on inventive acts that occurred outside the United States, to the extent permitted by 35 U.S.C. §104 (2006).²²⁸ This is particularly important for inventors who invented outside the United States and now seek U.S. patent protection. Section 104 allows proof of foreign inventive activity (e.g., conception, diligence, actual reduction to practice) in countries that are members of the North American Free Trade Agreement (NAFTA) or the World Trade Organization (WTO). In implementing §104, Rule 131 specifies that

Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. ²²⁹

December 8, 1993 is the effective date of section 331 of Public Law 103–182, the NAFTA Act.²³⁰ January 1, 1996 is the effective date of section 531 of Public Law 103–465, the Uruguay Round Agreements Act (URAA),²³¹ which implemented provisions of the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) into the U.S. domestic patent laws.

USPTO policy appears to provide that if an inventor needs to rely on foreign inventive activity that occurred before the December 8, 1993 or January 1, 1996, effective dates of the NAFTA and the URAA in a country that is now a member of the NAFTA or the WTO, the foreign activity will be assigned the December 8, 1993 date or the January 1, 1996 date, respectively (assuming the country in question was a member of the NAFTA or WTO on those dates).²³² For example, if an inventor seeking to antedate a prima facie §102(a) reference wants to rely on an actual reduction to practice that occurred in France in 1994, the USPTO would treat the reduction to practice as having occurred in France on January 1, 1996, the effective date of the URAA (France having become a member of the WTO on January 1, 1995²³³).

[c] Disclaiming Affidavits

In situations in which the applicant is unable to remove a prima facie §102(a) reference as prior art by antedating it (i.e., establishing an invention date before the effective date of the reference), a "disclaiming" affidavit may be an alternative strategy. Specifically, if the prior art reference "is disclosing applicant's own work as derived from him or her, applicant may submit . . . a 37 C.F.R. 1.132 affidavit to show derivation of the [] subject matter [disclosed in the reference] from applicant and invention by applicant."²³⁴ This type of affidavit would establish that the applicant invented the claimed subject matter and that the author of the prima facie §102(a) reference derived it from the...