United States law gives inventors a right to a patent if they meet the requirements of the Patent Act.  Prior articles have discussed the requirements of 35 U.S.C. §101 (Section 101). This article discusses the next section of the Patent Act – 35 U.S.C. §102 (Section 102). 

Whereas Section 101 defines what subject matter may be patentable, Section 102 defines the novelty requirement; the patent application must describe and claim an invention that is different from what is already out there in the public domain. Section 102 defines what is already in the public domain. 

The first part of Section 102 defines which sources of information are available for patent examiners to use when evaluating a patent application. Generally, if information is disclosed by one of the sources of information listed in
Section 102, then that information is part of the “prior art.” If the invention is already described in the prior art when the inventor files their application, then the patent examiner can and should deny the application. 

Section 102 defines prior art to include just about anything described in any printed publication. So, what is a printed publication for the purposes of Section 102?  In the past, the U.S. Supreme Court has taken a very wide view of what qualifies as a printed publication. 

For example, a single copy of a thesis available in a foreign university library, a drawing available only in a foreign patent office and a poster board displayed at a conference for several days have qualified as printed publications under Section 102. Consequently, if the inventor is aware of any writing describing their invention or something very similar to it, they should seek a professional opinion before investing in a patent application.

In addition, Section 102 defines prior art to include unpublished patent applications filed before the inventor has filed their application, despite those applications not being available to the public at the time of filing.  The United States Patent and Trademark Office (USPTO) has a statutory duty to keep patent applications secret until they are published about 18 months after their effective filing date. 

However, applications filed prior to an inventor’s date of filing are still considered to be prior art as of their filing date. As a result, patent applications can be denied based upon information that is not readily discoverable prior to filing.   

In addition, Section 102 bars an inventor from filing for a patent application if the invention has been on sale, in public
use or otherwise available to the general public prior to the filing date of the application.  The exact wording of this section of the statute changed a little a few years ago making patent attorneys scratch their heads and argue over whether how to interpret those words. 

On sale does not necessarily mean that a sale was made but can mean offering to sell the invention.  Right now, there is a case winding its way through the courts that involves the question of whether a pharmaceutical company entering into a license agreement and a supply and purchase agreement more than a year prior to the filing date of its patent application triggered the “on sale bar” in Section 102. 

Therefore, inventors looking to file patent applications should assume that the terms could be given any reasonable meaning by the courts and plan accordingly.

In addition, Section 102 states that if the inventor discloses their invention through a printed publication – or by offering it for sale or otherwise making the invention available to the public – they can still file a patent application for that invention, but they have one year to do so. If they fail to file the application within one year or if someone else discloses it independently of the inventor, then the inventor has lost the right to their patent. Note – some countries do not have this rule and will use any public disclosure made before filing to deny the application so, inventors would do well to file first and disclose second. 

The U.S. patent system is designed to give patent applicants an incentive to disclose inventions sooner rather than later, so the public may benefit from their discoveries rather than the inventor having an incentive to conceal the invention. Consequently, patent applicants should file their applications as soon as practical to avoid their application being denied under Section 102. 

Russell is a native of Wilmington, N.C. and has been practicing law in Eastern N.C. since 2004. Prior to that, he worked in Chapel Hill and Durham as a research technician on teams exploring RNA-based gene therapies, viral fusion inhibitors, and the role Galactocerebroside plays in protein localization near nodes of Ranvier. After passing the patent bar in 2003 and becoming a registered patent agent, Russell received his law degree from Georgetown in 2004. He began his legal career representing clients in personal injury matters but later left personal injury to provide patent prosecution services to law firms in China and Taiwan prior to joining The Humphries Law Firm in 2014. Russell helps individuals and businesses protect their innovations, creations and business information using strategies based in patent, trademark, copyright and trade secret law. His work includes both strategic planning and dispute resolution. He assists clients who want to buy and sell businesses, and license or transfer their intellectual property assets. Russell also assists with the firm’s litigation practice, particularly in insurance and employment disputes.