Novelty And Loss Of Right - Pl Patent Exam Prep

Front 1

A "Patent" event under §102(a) requires what?

Back 1

Must include both:
1) Sovereign bestows rights,
2) Patent publishes.

Front 2

What subject matter is included in a §102(a) "patent"?

Back 2

Everything (not just claims) i.e., Unclaimed disclosed species may be cited as prior art.

Front 3

What is "the critical date" under §102?

Back 3

The date that is one year before the earliest effective US filing date.

Front 4

How are holidays and other PTO closures handled for purposes of §102(b)?

Back 4

If the one-year anniversary of a §102(b) event falls on a weekend or a federal holiday, filing on the next business day is timely.

Front 5

What are the 102(a) triggering events?

Back 5

1) Patenting anywhere.
2) Printed publications anywhere.
3) Public knowledge in the US.
4) Use by others (plural).

Front 6

What are the 102(b) triggering events?

Back 6

1) Patenting anywhere.
2) Printed publications anywhere.
3) "In public use".
4) "On sale".

Front 7

Describe "in public use" for §102(b).

Back 7

• No attempt to keep it secret.
• Does not have to be visible to public.

Front 8

Do violations of a non-confidentiality agreement count as "public use"?

Back 8

Yes - that use starts the bar → Sue under contract law.

Front 9

When are uses in public NOT "in public use" under §102(b)?

Back 9

• Experimental use (even if for product).
• Product must be incidental.
• Experimentation must be needed to demonstrate workability of invention.

Front 10

What key factors are used to determine whether there has been "public use?"

Back 10

a. Whether the nature of invention requires it.
b. Control and periodic checks by the inventor.
c. Length of test period.
d. Whether payment was made. Degree of commercial exploitation; nature of contact customer.
e. Wether records were kept and testing was systematic.
f. Whether a secrecy obligation was imposed.
g. Whether changes were made as a result of such use.

Front 11

What two conditions establish an "on sale" event?

Back 11

1) The claimed product was sold or offered for sale.
2) The invention was "ready for patenting"
• Actually reduced to practice - OR
• Enabling description produced.

Front 12

Who can make a patent-barring offer for sale?

Back 12

Anyone, e.g., the inventor, assignee, or an entirely independent third party.

Front 13

Describe on-sale bar burden shifting.

Back 13

Abstracts identifying vendor and price, along with date of product release, support a §102(b) rejection. Burden then shifts to applicant to show otherwise.

Front 14

How can the geographical requirements for on-sale bar be satisfied?

Back 14

Either offeror or offeree is in the US.

Front 15

What are exceptions to on-sale bar?

Back 15

Sale incident to experimental use.

Front 16

When are references presumed to be enabling?

Back 16

When they expressly anticipate or make obvious all of the elements of a claim.

Front 17

What is the test for "enablement?"

Back 17

Whether the reference, together with the knowledge of one skilled in the art, would enable one skilled in the art to make and use the invention.

Front 18

What is the rule for using a second reference to show enablement/inherency?

Back 18

Second reference may be used to show inherent feature or knowledge enabling a first reference.
Note: This does not violate the rule requiring a single reference for anticipation.

Front 19

What does abandonment under §102(c) require?

Back 19

• Intent to abandon,
• May be implied by inventor's action or inaction,
• Intent may not be imputed to inventory by another's conduct.

Front 20

What are common forms of implied intent?

Back 20

Long delay in applying for patent or developing the invention coupled with other evidence of intent (delay alone is insufficient).

Not claiming a disclosed embodiment raises a presumption of abandonment unless applicant files a continuation or rebroadening reissue.

Front 21

Are abandoning the invention and abandoning the patent application the same?

Back 21

No. Applications may be abandoned and revived.

Front 22

Can abandoned inventions be reacquired?

Back 22

Yes, if it is reacquired before another's invention of the same subject matter.

Front 23

What results in a §102(d) bar against patentability?

Back 23

Inventor obtained a foreign patent and foreign filing date more than 12 months before US application.

Front 24

What is the difference between scope of §102(d) and §102(b)?

Back 24

§102(d) is broader and applies to the same "inventions" but not necessarily the claimed inventions. However, §102(d) only applies to inventor's activities.

Front 25

What are the three non-PCT elements of §102(e)(2)?

Back 25

• Patent by another inventive entity,
• Filed in US,
• Before the invention by the applicant for patent.

Front 26

How can a §102(e)(2) reference be overcome?

Back 26

1) Subject matter in reference describes same invention,
2) Early invention date.

Front 27

§102(f) prohibits patents that are ________.

Back 27

derived.

Front 28

What is the geographical scope of §102(f)?

Back 28

Worldwide.

Front 29

A patent will be barred under §102(g)(2) if:

Back 29

Another in this country makes the invention first.

Front 30

When is §102(g)(2) applicable?

Back 30

• Ex parte patentability examination,
• In an interference proceeding.

Front 31

Five conditions for §102(g)(2) patent-defeating events:

Back 31

1) Invention must be made (constructive or actual),
2) In the US,
3) by another,
4) before applicant's date of invention,
5) the other's invention was not abandoned, suppressed, or concealed.
• Doesn't have to be public.

Front 32

Diligence only needs to be ___________.

Back 32

reasonable.

Front 33

What is the difference between “incorporating” abandoned applications versus “referring” to them?

Back 33

Incorporating an abandoned reference makes it prior art under §102(e)(2) as of the filing date of the incorporating patent.
Referring means the content of an abandoned application becomes prior art under §102(a) or (b) as of the patent's issue date.

Front 34

Cancelled material becomes prior art under which sections? When?

Back 34

Under §102(a) and (b) as of the issue date.

Front 35

When may an examiner provisionally reject a patent?

Back 35

Claims in another application may be provisionally rejected as unpatentable over the patent to be issued when both have same assignee or inventor.

Front 36

Explain Doctrine of Forfeitures:

Back 36

Sale or offer to sell products of a process or machine triggers §102(b) for the hidden machine or process. Does not apply to a 3rd party who later invents the machine or process.