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Patents & Novelty/Priority

Summary of Novelty
Pre-AIA Patent will be denied for failing to be novel if someone other than the inventor (focus on
someone other than the applicant/inventor)
o (1) Knew, (2) Disclosed, (3) Used/invented, or (4) Patented/claimed the invention
o Focus on the applicants date of invention
Post-AIA Patent will be granted unless the invention was
o (1) patented, (2) described in a printed publication (e.g. academic journal), or (3) available to the
public before the effective filing date
o Focus on the effective filing date (first to file)
Summary of Priority
Pre-AIA patent will normally issue to the first person to invent a device or process and reduce it to
practice (first to invent)
o Ask: who was the first to reduce the invention to practice?
o Must have (1) public use and (2) reduction to practice
Actual RTP when you have physically built or tested the invention (e.g. a prototype)
Constructive RTP when you have filed the patent application and enabled it
o Who ever reduces to practice first gets priority and gets the patent
Note that there are exceptions
Post-AIA who ever files the patent first gets priority

From Crunchtime
Pre-AIA 102 Novelty (first to invent)
The novelty evaluation under pre-AIA 102 focuses on the applicants date of invention
The forms of prior art that may anticipate an applicants invention and render it non-novel (and thus not
patentable) are found in 102(a), (e), and (g)
o In each case, the prior art (the earlier embodiment of the invention, written description,
publication, patent, or patent application) must include every element stated in the applicants
claim, arranged in the same way
Pre-AIA 102(a) first to invent
o Focus on the actions of persons other than the inventor/applicant before the inventor/applicant
made the invention
o Pre-AIA 102(a) says that a patent must be denied if:
(1) The applicants invention was known in the U.S. before the applicant for patent
To have been known in the US prior to the applicants invention date, the
invention must have been:
o (a) Reduced to practice (either actually or constructively), or otherwise
described in a writing sufficiently to enable a PHOSTIA to make it
without undue experimentation, AND
o (b) Accessible to the public
Reduction to Practice
o Actual when you make a prototype
o Constructive when you file and enable
(2) The applicants invention was used in the U.S. before the applicant invented
To be used in the US prior to applicants invention date, the invention must
have been:
o (a) Reduced to actual practice,
o (b) Used in the manner for which it was intended by its inventor, and
o (c) Accessible to the public
(3) The applicants invention was described in a printed publication in the U.S. or a
foreign country before the applicant invented, OR
To find a printed publication that anticipates the applicants invention, several
considerations are relevant:
o (a) The publication must have been printed
Publication must have been reduced to a discernible, tangible form
o (b) There must have been a publication
Publication will be found if an interested American, exercising
reasonable diligence, could obtain the information
o (c) The alleged printed publication must describe the invention sufficiently
to enable a PHOSITA to make or practice the invention without undue
When a printed matter is displayed by not distributed or indexed, several factors
should be considered to determine if it was a sufficient printed publication
o (a) The length of time the matter was displayed or exhibited
o (b) The expertise of the targeted audience
o (c) The existence of reasonable expectations that the displayed material
would not be copied, and
o (d) The simplicity or ease with which the displayed material could have
been copied
(4) The applicants invention was patented in the U.S. or a foreign country before the
applicant invented
For an invention to be anticipated by a prior patent under 102(a), it must appear
o (a) the applicants invention was the actual subject of the patent
o (b) The patent effectively granted rights in the invention before the
102(a) applicant invented, and
o (c) The patent disclosure was available to the public for the 102(a)
applicants invention date

Post-AIA 102 Novelty first to file
o In evaluating novelty under Post-AIA 102, the focus is on the applicants effective filing date
rather than on the invention date
Prior art that can anticipate a patent and render it non-novel is found in Post-AIA
102(a), and exceptions to anticipating prior art are in 102(b)
o The Post-AIA novelty provisions generally recognize priority in the first inventor to file for an
application, rather than the first to invent
However, under certain circumstances, the first inventor to disclose the invention to the
public may have priority
o Under Post-AIA 102(a), an applicants invention is novel unless:
(1) The claimed invention was patented, described in a printed publication, in public use,
on sale, or otherwise available to the public prior to the applicants filing date, OR
(2) The claimed invention was described in an earlier-filed application for US patent (or a
resulting patent) naming another inventor and subsequently published or granted
To anticipate an applicants invention, prior art must have all the same elements in the
applicants claimed invention, arranged in the same way
There are no geographical limitations on prior art Post-AIA foreign public uses and on-
sale events have the same anticipatory effect as domestic ones
o Two Exceptions to anticipatory prior art under Post-AIA
(1) Disclosures made by inventor
Disclosures made by the inventor and those deriving from him 1 year or less
before the application date are excluded from anticipatory prior art
Policy: this gives the applicant a grace period similar to the statutory bar that
allows filing of the patent within 1 year of publicly disclosing the invention
(2) Disclosures made by third parties after inventor discloses
Disclosures made by third parties will not anticipate the applicants invention if
the disclosures were made after the applicant/inventor had already disclosed the
same subject matter