A Quiz on New 35 USC § 102 of the America Invents Act

A Quiz on New 35 USC § 102 of the America Invents Act

The America Invents Act fundamentally changed the basic, and not so basic, law we have been applying for decades. Experienced patent attorneys can recite 35 USC § 102 and explain all its nuances. In this Analysis, Jim Longacre presents a series of quizzes designed to test your grasp of the new law. It is not intended to be comprehensive but rather present an opportunity to find out what you know, and what you think you know, which is, in fact, wrong. Mr. Longacre writes:

QUIZ

     1. Inventor Smith files a US application on March 4, 2012. The application is published by the Office on October 12, 2013. On April 4, 2014, a continuation application is filed, which leads to allowance of the application and issuance in June, 2015. The parent application is abandoned. The claims of the continuation are fully supported by the parent application. Smith offered to sell the invention in Japan on December 2010, but the offer was declined.

     Which of the following is true?

     (A) The Smith patent is invalid because, under the new patent law, a sale in a foreign country is prior art.

     (B) The validity of the Smith patent is judged under new 35 USC § 102, because it issued from a patent filed on or after March 16, 2013.

     (C) The validity of the Smith patent is judged under the old 35 USC § 102, because the claims of the continuation are entitled to an effective filing date from an earlier US application filed prior to March 16, 2013.

     (D) The validity of the Smith patent is judged under new 35 USC § 102 because it issued from a patent issued after March 16, 2013.

     (E) The validity of the Smith patent is judged under new 35 USC § 102 because it issued from a patent filed on or after September 16, 2011.

     Answer to Question 1.

     (C) is correct.

     Good old 35 USC § 102 is going to be with us for a good many years. Applications that have claims that are entitled to an effective filing date prior to March 16, 2013, stemming from an earlier application claiming priority under 35 USC § 120, are judged under old 35 USC § 102. Under old 35 USC § 102, an offer to sell the invention must be made "in this country," i.e. in the US of A, to be prior art. Contrariwise, under new 35 USC § 102, the offer may be made anywhere is the world.

     35 USC § 100(i), as amended, now defines effective filing date as basically any priority date, be it provisional (35 USC § 119(e)), foreign (35 USC § 119(a-d)) or domestic (35 USC § 120). The old 35 USC § 102 applies to any application filed before March 16, 2013, or has a priority date before that date. The new 35 USC § 102 applies to any US application that has an effective filing date on or after March 16, 2013.

     Thus, the old 35 USC § 102 applies in this example.

     It is not asked, but the sale in Japan, thus, is not prior art. An offer must made in the US to be prior art under old 35 USC § 102(b).

     Under new 35 USC § 102, an offer for sale or a public use anywhere in the world is prior art.

     Under both the old and new 35 USC § 102, the sale need not take place to be prior art. The offer alone is sufficient.

     An interesting issue arises because it turns out that March 16, 2013 is a Saturday. Does that deadline slide to the following Monday as provided by 37 CFR 1.6? That's a rule, not a statute. My bet is that the March 16, 2013 deadline slides to Monday, but I am not at all certain.

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