The Old 35 USC 102 (sections (a)-(b))

 In America Invents Act of 2011, History, Innovation and the New Economy, Patents

As mentioned in yesterday’s post, we will now discuss 35 USC 102 as it is today before it is replaced by the new 35 USC 102. The old 35 USC 102 had sections (a)-(g).  Our discussion of 35 USC 102 will be broken up into 4 posts. The first will discuss sections (a)-(b), the second will discuss (c)-(d), the third will discuss section (e), and finally, we will discuss sections (f)-(g).

So, to begin: 35 USC 102 has preamble and we have included the text of sections (a) and (b) below:

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

Essentially, section (a) says that if the invention was known prior to the Applicant inventing it, then the Applicant cannot get a patent. As can be seen, if something was known in a foreign country, but wasn’t in a printed publication, then it would be patentable in the US. Those of you who remember cases of bio-pirating of foreign countries’ herbal medicinal remedies might see the problem with this section. If something is known in another country, for example, India, but not written about, then it could still be patented here under the old rules.

Section (b) is the so-called 1-year grace period. An inventor can sell, use publicly, or disclose his or her invention, but needs to get a patent application on file within a year or the inventor will forfeit the patent rights.

One noteworthy point is that if an inventor invents something prior to another inventor disclosing it, the original inventor might be able to “swear behind” the second inventor’s disclosure and still obtain patent protection (as long as the disclosure was less than 12 months before filing).

As an example, let’s say Inventor A invents something in January, but doesn’t disclose it.  Inventor B discloses the same invention in December. Inventor A files a patent application in February of the following year. Inventor A will be able to “swear behind” Inventor B’s disclosure and will still be able to get a patent on the invention. Remember, this is still the first-to-invent paradigm!

Next up: 35 USC 102(c)-(d).

**Reminder: Although this post is about the old statute, this statute is still in effect until March 16, 2012.

Del Vecchio and Stadler LLP

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