In basic terms, to obtain a patent in the United States, two conditions of patentability must be met: the invention must be “novel,” which basically means “not previously disclosed,” and must be nonobvious (from earlier patents or published materials). These requirements are set forth in the US Patent Act, 35 USC 102(a) which states in part:

A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

In patent law, these activities and documents are generally called “prior art.” Thus, from the above, prior art includes:

• What is disclosed in an issued patent (domestic or foriegn)
• What is disclosed in a published patent application (domestic or foriegn)
• What is disclosed in a non-patent printed publication (including what might be disclosed orally at public presentations)
• Evidence that the claimed invention was in public use
• Evidence that the claimed invention was on sale or otherwise available to the public

When a patent application is filed, the prior art relevant to the application is examined. As the Patent Office explains, the prior art is used to determine whether a claimed invention is novel or nonobvious. If the prior art discloses that the claimed invention is not novel — previously disclosed — or that the claimed invention is obvious — based on the previous disclosures — then the patent application will be rejected.

What is “Disclosure” as it Relates to Prior Art?

Not all public “disclosures” will constitute “prior art.” Thus, if an inventor announces a new invention with a general vague description, likely, such an announcement will not be considered prior art. To “count” as prior art, all of the elements of the claimed invention must be disclosed (either explicitly or as a matter of logic) and the elements must be arranged or combined in the same way as in the claim. Further, to “count” as prior art, what has been disclosed must permit a person of “ordinary skill in the art” to be able to make the invention without undue experimentation.

Exceptions

There are, however, some exceptions set forth in 35 USC 102(b) that will take qualifying public disclosures out of the category of “prior art.” The most important exception is for disclosures “made one year or less before the effective filing date of a claimed invention” made by the inventor or joint inventor (and/or certain others defined in the statute). This is the so-called “grace period” given to inventors. Disclosures made by inventors during the “grace period” will not “count” as prior art so as to prevent issuance of the patent.

What is the “Effective Filing Date?”

With respect to when the “grace period” expires, the legal definition of “effective filing date” is important. Often, the “effective filing date” is the actual filing date of the patent application. But the “effective filing date” is also defined as “… the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under …” previously-filed patent applications. This provision is extremely important for continuation patent applications. A newly filed patent application that can claim the priority date of an earlier-filed application will have a much longer “grace period” (and, just as importantly, the earlier-filed application will not “count” as prior art for the new application).

Contact Revision Legal For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

The America Invents Act and the First-Inventor-to-File System

The Leahy-Smith America Invents Act (“AIA”), enacted in 2011, fundamentally changed how the United States determines who is entitled to a patent when two or more inventors independently develop the same invention. Before the AIA, the US used a first-to-invent system: the inventor who could prove they were the first to conceive and reduce to practice the invention was entitled to the patent, even if they were not the first to file. After the AIA, the US adopted a first-inventor-to-file system: the first inventor to file a patent application is generally entitled to the patent.

This change has significant strategic implications. Under the current system, filing as quickly as possible after conceiving a potentially patentable invention is critical. Delay in filing creates the risk that another inventor independently develops and files for the same invention before you do — and if they file first, they are entitled to the patent. The best defense against this risk is filing a provisional patent application immediately upon conception, which establishes your priority date while giving you 12 months to prepare a more detailed nonprovisional application.

On-Sale Bar and Public Use: Practical Traps for Inventors

Two of the most common categories of prior art that trip up inventors are the on-sale bar and the public use bar, both of which are covered by 35 U.S.C. § 102(a)(1). The Supreme Court addressed the on-sale bar in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S. 123 (2019), holding that a secret sale — even one that does not publicly disclose the invention — can trigger the on-sale bar and prevent patentability if it occurs more than one year before the patent application filing date.

This ruling means that an inventor who enters into a supply agreement, distribution deal, or other commercial transaction involving the invention more than a year before filing has potentially triggered the on-sale bar and may be unable to obtain a patent. The practical lesson: file a provisional application before entering into any commercial transactions involving your invention, even if the transactions are confidential.

Prior Art Searches: Why Inventors Should Conduct Them Early

Before investing significant time and money in a patent application, inventors should conduct a prior art search to assess whether the invention is likely novel and nonobvious. A thorough prior art search includes:

• USPTO patent database searches — The USPTO’s Patent Full-Text and Image Database (PatFT) and Patent Application Full-Text and Image Database (AppFT) contain millions of issued patents and published applications searchable by keyword, classification code, inventor name, and other parameters
• Foreign patent database searches — The European Patent Office’s Espacenet database provides access to patent documents from over 90 countries; WIPO’s PATENTSCOPE covers PCT applications filed internationally
• Non-patent literature searches — Academic journals, conference proceedings, technical standards, and other non-patent publications can constitute prior art under Section 102; searching these sources requires knowledge of the technical field

A prior art search cannot guarantee that no prior art exists — searches are inherently incomplete — but a thorough search significantly reduces the risk of filing an application that will be rejected based on existing prior art. It also helps patent counsel draft claims that are differentiated from the closest prior art, making a stronger application.

Obviousness Under 35 U.S.C. § 103: Beyond Novelty

Even if an invention is novel — meaning no single prior art reference discloses every element of the claimed invention — the invention may still be rejected as obvious under 35 U.S.C. § 103. The Supreme Court articulated the framework for obviousness analysis in Graham v. John Deere Co., 383 U.S. 1 (1966), requiring consideration of: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) objective indicia of nonobviousness such as commercial success, long-felt need, and failure of others.

The objective indicia of nonobviousness — sometimes called secondary considerations — can be powerful evidence of patentability when the invention fills a demonstrated market need, achieves unexpected results, or succeeds where others have tried and failed. Building a record of secondary considerations during prosecution can make the difference between allowance and rejection on obviousness grounds.

Contact the patent lawyers at Revision Legal at 231-714-0100 to discuss patentability analysis and to assess whether your invention meets the novelty and nonobviousness requirements of 35 U.S.C. § 102 and § 103.