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Patent Law in Plain English: Part 1 – Updates to 35 USC 102(a)

At Fastcase, we like to take complex legal concepts and make them simple. This month, we will be taking on the multifaceted issue of Patent Law. Each week we’ll highlight a difficult patent law concept and explain it in plain English.

We will be starting with the “America Invents Act” and its changes to 35 USC 102. All of the statutes below can be found on Fastcase’s Legal Research Engine HERE, or login through your State Bar Association’s website and clicking the link to log in to Fastcase.

The “America Invents Act” (AIA) is a federal statute, the act was signed September 16, 2011, and effectively set in motion the wheels to move the United States patent system from a “first to invent” to a “first inventor to file” system, eliminating the long-standing “interference” proceedings, and implanting “post-grant proceedings.”

With this series, we will begin by breaking down the AIA provisions starting with the updated 35 USC 102, which was altered by the America Invents Act. The updates to 35 USC 102 stress “certainty” over “equity.” The primary goal of the updated 35 USC 102 is that the first inventor to file a patent application should be the one who ends up with the patent. Before the America Invents Act was implemented, usually the first to invent was awarded the patent, regardless of whether or not they were actually the first to file.

The new 35 USC 102 is divided into four parts: 35 USC 102(a)-(d). Section 102(a) is where the ‘prior art’ is housed, while 102(b) lays out what exceptions can be used to avoid the ‘prior art’ laid out in 102(a). Sections 102(c) & (d) contain definitions for what qualifies as “common-ownership” and what qualifies as the “effective filing date,” respectively.  Today we’re going to talk about 35 USC 102(a), this will be followed up with the other four sections as the series continues.

For more on 102(a), continue reading below

Now turning to 35 USC 102(a), this is where the ‘prior art’ is laid out. Prior art is any evidence that your invention was already known before you invented it. When it comes to prior art preventing your subject matter from being patented, it is sufficient that someone, somewhere, sometime previously had described, displayed, or made something that contains a use of technology that is similar to the subject matter of your invention. 102(a) further describes what qualifies as prior art, 35 USC 102(a) is broken up into two subsections, 102(a)(1) & 102(a)(2).

Under 102(a)(1) you can’t get a patent on something that was in the “public domain” before you filed. Public domain means that the subject matter existed somewhere in the world, in any country, before you filed an application claiming the subject matter as your invention. Evidence of public domain includes printed publications that describe your subject matter, earlier-filed patents which contain your subject matter, your subject matter being publicly used or sold, or if the subject matter of your patent application is “otherwise available.”

Under 102(a)(2) you cannot get a patent on something that someone else has already filed a patent on. With 102(a)(2) the inquiry is focused solely on whether or not, someone had already filed for an invention that covers the subject matter you hope to get a patent on. With 102(a)(2) the USPTO will look to see if there are published patent applications or issued US applications that were filed before your application.

Now that you know what can prevent you from getting subject matter patented, we can now look to the predefined ways or exceptions to the prior art. These exceptions are contained in 35 USC 102(b). 102(b) has 5 separate provisions, each bearing an exception to the prior art provisions listed in 102(a). In Part 2 of this series, we will go into 102(b), all of its exceptions, and how they apply.


For Case Law on 35 USC 102, please see:


Magnetar Techs. Corp. v. Six Flags Theme Parks, Inc. (D. Del., 2017)


Limelight Networks, Inc. v. XO Commc’ns, LLC (E.D. Va., 2017)


Allergan, Inc. v. Sandoz, Inc. (Fed. Cir., 2017)


D Three Enters., LLC v. Rillito River Solar LLC (D. Colo., 2017)


Written by Ebube N. Okoli, Esq.




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