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Patent Law in Plain English: Part 2 – Updates to 35 USC 102(b)

At Fastcase, we like to take complex legal concepts and make them simple. Right now we are continuing to discuss the multifaceted issue of Patent Law. This week we’re highlighting another difficult patent law concept and explaining it in plain English.

In our last post we started with the “America Invents Act” (AIA) 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 click the link to log in to Fastcase. 

We began this series by breaking down the AIA provisions starting with the updated 35 USC 102, which was altered by the America Invents Act. 

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(b), this will be followed up with the other four sections as the series continues.

For more on 102(b), continue reading below

Image result for george washington carver inventing

In our last post, we discussed how 102(a) ‘prior art’ fundamentally deals with a disclosure of your subject matter before you file a patent. 35 USC 102(b) deals with exceptions to ‘prior art,’ so if there is something from 102(a) that on its face prevents you from getting a patent, you may be able to get around that, if one of the provisions from 102(b) applies.

102(b) is divided into two sections, but both deal with exceptions. The subsections of 102(b)102(b)(1)(A) & (B) which deal with exceptions to disclosures made specifically in applications and the later subsections 102(b)(2)(A) – (C), which deal with disclosures more generally.

Under 102(b)(1)(A) a disclosure made by the inventor, or someone who obtained the disclosure from the inventor, within 1-year of filing the application will not count as ‘prior art’ against the application. Similarly, with 102(b)(1)(B), if the subject matter of a 3rd party’s disclosure, made within 1-year prior to the filing, was made public by the inventor, or someone who obtained it from the inventor, before the 3rd party’s disclosure, then the 3rd party disclosure will not be ‘prior art’ against the application.

Under 102(b)(2)(A) a disclosure in a prior-filed published or issued application will not be ‘prior art’ if the disclosed subject matter was obtained from the inventor. Similarly, under 102(b)(2)(B), subject matter disclosed by 3rd party published or issued application is not ‘prior art’ if it was first publicly disclosed before the 3rd party’s disclosure, by the inventor or another who obtained the subject matter from the inventor.

Likewise, under 102(b)(2)(C), if the subject matter was disclosed, and the claimed invention in your application was commonly owned by you before the effective filing date of your current application, then the prior subject matter disclosed in the jointly-owned application will not be ‘prior art’ against your current application.

In Part 3 of this series, we will go into 102(C), how it works, and how it applies.

For more on 102(b) please see:

Milo & Gabby LLC v. Amazon.Com, Inc. (Fed. Cir., 2017)

Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc. (Fed. Cir., 2017)

FastShip, LLC v. United States (C.C., 2017)

Medicines Co. v. Mylan, Inc. (Fed. Cir., 2017)

 

Written By: Ebube N. Okoli, Esq. 

 

 

 

 

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