CHAPTER 7 Outline

JurisdictionUnited States


Novelty, No Loss of Right, and Priority [Pre-America Invents Act of 2011]

Chapter Explanatory Note

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

[A] Burden of Proof on USPTO
[B] Claim Interpretation in USPTO
[C] Prior Art as Defined by §102
[D] Lack of Novelty Versus Loss of Right
[E] Persons Who Can Trigger the §102 Provisions
[F] Geographic Limitations in §102
[G] Temporal Limitations in §102

§7.02 Anticipation

[A] Definition
[B] Strict Identity Rule
[1] "Four Corners"/Single Reference Rule
[2] "Arranged as in the Claim"
[a] Generally
[b] Reference Not Anticipatory If It Must Be Distorted
[3] Exceptions to the Single Reference/"Four Corners" Rule
[4] No Analogous Art Requirement for Anticipation
[5] To "Suggest" Is Not Sufficient for Anticipation
[C] Species/Genus Relationships
[1] Generally
[2] Contrasting Case Examples
[3] When is a Prior Art Genus a “Limited Class”?
[D] Question of Fact

§7.03 Inherent Anticipation

[A] Generally
[1] "Necessarily Present"
[2] Reference Failing to "Necessarily Disclose"
[3] Use of Extrinsic Evidence to Establish Inherency
[B] Accidental Anticipation
[C] Contemporaneous Recognition Not Required

§7.04 Enablement Standard for Anticipatory Prior Art

[A] General Principle
[B] Exception for Prior Art Compounds Lacking a Utility

§7.05 Anticipation Under §102(a)

[A] Filing Date as Prima Facie Invention Date
[1] References Having Effective Date Less Than One Year Before Applicant's Filing Date
[2] Antedating a Putative Prima Facie §102(a) Reference by Establishing an Earlier Invention Date
[a] Generally
[b] Relying on Inventive Activity Outside the United States Under 35 U.S.C. §104
[c] Disclaiming Affidavits
[B] "Known or Used by Others" Under §102(a)
[C] "Patented" Under §102(a)
[D] "Printed Publication" Under §102(a)
[E] Strategies for Overcoming a §102(a) Anticipation Rejection

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

[A] Introduction
[1] Filing Date
[2] "Critical Date"
[B] Grace Period
[C] Policies Underlying the Statutory Bars
[D] "Patented" Under §102(b)
[E] "Printed Publication" Under §102(b)
[1] Public Accessibility
[2] The Thesis Cases
[3] Confidentiality Norms
[4] Scientific or Technical Presentations
[a] Klopfenstein (2004)
[b] Medtronic (2018)
[5] Internet Postings
[a] SRI Int'l (2008)
[b] In re Lister (2009)
[c] Jazz Pharms (2018)
[d] Acceleration Bay (2018)
[6] Trade Shows and Conventions
[a] GoPro (2018)
[b] Nobel Biocare (2018)
[F] "Public Use" Bar of §102(b)
[1] Foundation: Egbert v. Lippmann (1881)


[2] Public Use by Third Parties
[a] Generally
[b] Corroboration of Oral Testimony
[3] Non-Public "Public Use"
[4] Ready for Patenting
[G] "On Sale" Bar of §102(b)
[1] Introduction
[2] Policy Considerations
[3] When Is an Invention Capable of Being Placed On Sale? Pfaff v. Wells (U.S. 1998)
[4] Post- Pfaff Decisions Interpreting "Commercial Offer"
[a] Decisions Finding No Commercial Offer
[b] Decisions Finding Commercial Offer
[c] Supplier Sales
[d] Contingent Sales (Conditions Precedent)
[5] Post- Pfaff Decisions Interpreting "Ready for Patenting"
[a] Inventions Not Ready for Patenting
[b] Inventions Ready for Patenting
[H] Experimental Use Negation of the Statutory Bars
[1] Meaning of "Negation"/Burden of Proof
[a] "Negation" Not "Exception"
[b] Assigning Burdens of Production and Proof
[2] Foundation: City of Elizabeth v. Nicholson Pavement (1878)
[3] Experimental Use Factors
[4] Must Experimental Use End with Actual Reduction to Practice?
[5] Positioning Experimental Use Within the Pfaff Framework

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