Chapter §7.06 Loss of Right/Statutory Bars Under §102(b)

JurisdictionUnited States

§7.06 Loss of Right/Statutory Bars Under §102(b)

[A] Introduction

Section 102(b) of 35 U.S.C. (2006) is a loss of right provision rather than a true novelty provision. Even though an invention may be novel on its invention date, the right to patent it may be lost if the invention is thereafter introduced into the public domain and a U.S. patent application claiming the invention is not filed within the following year.

Section 102(b) enumerates four ways in which, even though the invention may have been novel when invented, the right to patent it nevertheless may be lost or forfeited due to delay in filing. These four loss-triggering events, also referred to as "statutory bars," are as follows: more than one year before the application's U.S. filing date, the invention was (1) patented anywhere in the world, (2) described in a printed publication anywhere in the world, (3) in public use in the United States, or (4) on sale in the United States. Following an explanation of additional terminology and policy concerns, each of these bar-triggering events is discussed in further detail below.

[1] Filing Date

The filing date that matters for purposes of determining whether a §102(b) loss of right has occurred is the "date of the application for patent in the United States."285 More precisely, this date is the earliest U.S. filing date for the application in question. This filing date (sometimes referred to as the application's "effective U.S. filing date") is the earliest of (1) the actual filing date in the USPTO of the non-provisional (regular) application being examined; (2) the filing date in the USPTO of the applicant's earlier-filed provisional application directed to the claimed invention,286 provided that all requirements for a provisional application are satisfied;287 or (3) the filing date in the USPTO of the applicant's related, earlier-filed non-provisional (regular) application, of which the application being examined is denominated a continuation, continuation-in-part (CIP), or divisional application, and provided that all other requirements for claiming priority to the earlier-filed application are satisfied.288

The effective filing date for §102(b) purposes must be the earliest U.S. filing date. Any earlier foreign filing date (Paris Convention "foreign priority date") associated with the U.S. application being examined in the USPTO is not relevant for §102(b) purposes, and can not be relied on for overcoming a §102(b) bar.289

[2] "Critical Date"

Patent attorneys refer to the date that is one year before the application filing date as the "critical date" for §102(b) purposes. Thus, to trigger 35 U.S.C. §102(b) (2006), a statutory bar event must have occurred prior to the critical date. The operation of 35 U.S.C. §102(b) (2006) is depicted in the timeline in Figure 7-4.

FIGURE 7-4. Timeline for 35 U.S.C. §102(b) (2006)

As depicted in Figure 7-4, "§102(a) events" are those that occurred before the invention date,290 whereas "§102(b) events" are those that occurred before the §102(b) critical date. The two relevant time periods overlap for dates before the invention date. For example, if a nonprovisional (regular) U.S. patent application was filed on February 1, 2010, making its §102(b) critical date February 1, 2009, and the invention date was sometime in 2007, then a technical article published during 2006 (anywhere in the world and authored by someone other than the application's inventor) that identically described the invention claimed in the patent application would qualify as "printed publication" prior art under both §102(a) and §102(b).291

[B] Grace Period

Figure 7-4 depicts that a U.S. patent applicant enjoys a "grace period" or "safe harbor" under 35 U.S.C. §102(b) (2006) comprising the one-year time period between the §102(b) critical date and his application filing date.292 During this one-year pre-filing date grace period, the claimed invention may be patented, described in a printed publication, in public use, or on sale, all without triggering a §102(b) loss of right to patent it in the U.S. In other words, the one-year pre-filing date grace period is a free pass that allows an inventor to test and refine his invention, make sales of it in the marketplace, and evaluate whether the considerable cost of going forward with the patenting process is justified. So long as the patent application is filed within one year of the first instance of the invention being released into the public domain or commercially exploited by patenting, description in a printed publication, public use, or placement of the invention on sale, either by the patent applicant or a third party, the right to a U.S. patent will not be lost under 35 U.S.C. §102(b) (2006).

The liberal one-year grace period is unique to the United States. Countries other than the U.S. are generally "absolute novelty" systems that recognize a pre-filing date grace period, if at all, only for very limited times and purposes such as certain types of international exhibitions.293 For example, under the European Patent Convention (EPC) Article 54, any activity that makes an invention part of the "state of the art" at any time before the filing date of the European patent application will defeat novelty.294 Thus, when clients want to obtain patent protection in foreign countries as well as in the United States, they should be advised not to make any public disclosure of their inventions at any time prior to filing their priority patent application.295

The one-year grace period of the U.S. framework permits conceptualization of the §102(b) statutory bars in an additional way. The occurrence of any of the four statutory bar events effectively starts the clock running against a potential U.S. patent applicant, operating as a sort of statute of limitations.296 To avoid forfeiting the right to a U.S. patent on her invention under §102(b), the inventor must file an application claiming that invention within one year of the first occurrence of any of the four statutory bar events. If she waits to file even a single day beyond the one-year grace period, her right to a patent is lost under 35 U.S.C. §102(b) (2006).

[C] Policies Underlying the §102(b) Bars

Understanding why the U.S. patent system includes §102(b) is essential to properly applying the statutory bars.297 It has often been said that the statutory bars of 35 U.S.C. §102(b) (2006) are, in effect, defined by the policies that underlie the bars.298 Those policies include the following:299

1. Minimize detrimental reliance. Public policy disfavors removing inventions from the public domain that the public has justifiably come to believe are freely available for copying and use as a consequence of prolonged public use or sales activity.
2. Encourage prompt dissemination. Public policy favors prompt and widespread disclosure of new inventions to the public. The sooner an inventor begins the patenting process by filing an application, the sooner the public gains possession of the invention through the disclosure of a resulting patent. The statutory bars force the inventor to file promptly or risk possible forfeiture of his patent rights due to prior sales or public uses.
3. Prohibit undue commercial exploitation. Public policy seeks to prevent the inventor from commercially exploiting the exclusivity of his invention substantially beyond the statutorily authorized period (currently about 17–18 years). The statutory bars force the inventor to choose between seeking patent protection promptly following sales activity or public use, or taking his chances with his competitors without the benefit of patent protection. 300
4. Evaluate marketplace reaction. Public policy supports giving the inventor a reasonable amount of time (i.e., the one-year grace period of §102(b)) following sales activity or public uses to determine whether a patent is a worthwhile investment. This benefits the public because it tends to minimize the filing of patent applications of only marginal public interest.

The first three of these four policies primarily benefit the public, whereas the fourth policy primarily benefits the inventor. Although some decisions of the Federal Circuit eschew the "totality of the circumstances" approach of the court's earlier §102(b) decisions,301 the policy underpinnings of §102(b) remain relevant to all potential statutory bar analyses and should not be ignored.302

[D] "Patented" Under §102(b)

Just as the novelty of an applicant's claimed invention will be destroyed under 35 U.S.C. §102(a) (2006) if the same invention was "patented" by another before the applicant's invention date, the right to patent that invention will be lost under §102(b) if it was "patented" (by anyone) more than a year before the applicant's U.S. filing date. Because the identical word "patented" is used in both statutory provisions, courts have applied the same standards for determining whether an invention was previously "patented" within the meaning of §102(a) and §102(b).303 Accordingly, the reader is referred to the previous discussion of "patented" within the context of §102(a).304

[E] "Printed Publication" Under §102(b)

The question whether a particular document qualifies as "printed publication" prior art under pre-AIA 35 U.S.C. §102(b) (or §102(a)) poses a multitude of sub-questions: Is the document sufficiently publicly accessible? What if it is subject to limited distribution, perhaps only within a corporation? What if the information in the document is classified for national security purposes? Must actual access to the document by a person be proved, or is showing a reasonable likelihood of access enough? To exactly whom must the document be "publicly accessible"; that is, who is the relevant "public"? Are geographic or language details relevant? What is the meaning of "printed" in the Internet age? Must the document be actually available at the date of the invalidity litigation or patentability review in...

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