On Article 102 in the U.S. Patent Law System before and after the amendment

Prior to March 16, 2013, Section 102 of the U.S. Patent Act dealt with not only novelty (novelty) issues, but also statutory bar (statutory bar), and combined these two aspects, collectively referred to as anticipation. From the legal texts involved below, paragraphs (a), (e) and (g) of Article 102 are rules on novelty judgments, paragraphs (B), (c) and (d) are rules on statutory resistance (I. e., "loss of patent rights" in the title of Article 102), and paragraph (f) is a provision on procedure. Section 102 of title 35 of the United States Code before the amendment read as follows:

"Article 102 Patentability conditions: novelty, loss of patent The person shall be entitled to a patent unless--

(a) before the invention was made by the patent applicant, the invention was already known or used in this country by others, or was patented or described in a printed publication at home or abroad,

(B) more than one year before the date of application in this country, the invention has been patented or described in a printed publication at home or abroad, or has been publicly used or sold in this country,

(c) the person has abandoned the invention,

(d) the invention was first patented, resulted in a patent, or was the subject of a certificate of invention in a foreign country by the applicant, legal representative, or assignee of the invention before the date of the application in this country, and the application for a patent or certificate of invention was made twelve months before the application in the United States,

(e) the invention is described in (1) a patent application filed in the United States by others and published under section 122 (B) before the applicant accomplished the invention, or (2) a patent filed and granted in the United States by others before the applicant accomplished the invention, unless an international application filed under a treaty as defined in Article 351(a) has the same effect as an application filed in the United States, only if the international application designates the United States and is published in English under Article 21(a) of that treaty,

(f) is not himself the person who made the invention the subject-matter of the patent,

(g)(1) in the course of a conflict review under section 135 or 291, the other inventor involved proves, to the extent permitted by section 104, that before the person's invention the invention was made by another person and was not abandoned, contained or concealed, or (2) before the person's invention, the invention has been made by other inventors in this country and it has not been abandoned, contained or hidden. In determining priority under this subparagraph, consideration shall be given not only to the date on which the inventive concept was first conceived and put into practice, but also to the reasonable diligence of the person who first completed the inventive concept and then put it into practice from the time when he completed the inventive concept before others."

　　

 

Table 1 102(a) before amendment

　　

 

Table 2 102 (B) before amendment

 

Article 102 (a) and (B) are typical of the rules of novelty and statutory resistance, respectively. From a textual comparison, the two look very similar. However, they each contain different meanings and functions.

1) The time. The distinction between the two is clear here, with the novelty criterion of paragraph (a) using the "invention date" and the statutory barrier of paragraph (B) having a grace period of one year based on the "patent filing date.

(2) Space. The criteria in this regard are almost identical in both cases, with a geographical distinction based on the manner of disclosure.

(3) The perpetrator. There is a clear distinction between the two. In the case of novelty, paragraph (a) expressly provides for "others", while paragraph (B) does not include the words "others", which should be understood as "the inventor himself or others". But in fact, since these acts of others can be solved by paragraph (a), paragraph (B) mainly refers to the act of the inventor himself.

(4) Types of behavior. The two are basically the same, but slightly different. For example, paragraph (B) specifically provides for the specific case of "sale.

Following the entry into force of Section 3 of the AIA on March 16, 2013, the structure of Section 102 of the U.S. Patent Act changed fundamentally. First, the title of this article is changed from "patentability conditions: novelty, loss of patent right" to "patentability conditions: novelty", which indicates that the different rules on novelty and legal obstruction existing in Article 102 will disappear and be replaced by unified novelty rules. Second, the concept of existing technology will be uniformly defined, to replace the current practice in Article 102 of defining prior art separately by time, geographical area and mode of event. In this way, Article 102 of the new Patent Law is basically consistent with the patent laws of other countries and regions in the world. However, it should be noted that the terms of Article 102 of the U.S. Patent Law, especially these terms, often have different meanings due to the interpretation of judges in the jurisprudence over the years. Therefore, the U.S. patent law has adopted the novelty rule. In the form of the first application system, it still keeps a distance from other countries in the world in substance. The text of Article 102 (a) of the Patent Law after the AIA reads as follows: "(a) Novelty; prior art, the inventor shall be entitled to a patent unless--

(1) The claimed invention has been patented, described in a publication, or publicly used, sold or otherwise known to the public before the effective filing date of the invention; or

(2) The claimed invention is described in a patent granted under section 151 or in a patent application published or deemed to be published under section 122 (B), in which case the patent or patent application is signed by another inventor and has been validly filed before the effective filing date of the claimed invention."

　　

 

Table 3 Item 1 of paragraph (a) of 102 after amendment

 

Article 102 (B) is entitled "Exceptions", that is, it provides for exceptions to the general provision of "novelty and prior art" in the preceding paragraph. It is divided into two items: one is the grace period; the other is the relationship between the inventor and the disputed object. First, analyze item (1). Its legal text is as follows:

"(B) Exceptions--

(1) Disclosure made 1 year or less before the effective filing date of the claimed invention-Disclosure made 1 year or less before the effective filing date of the claimed invention is not prior art in the claimed invention under subsection (a)(1) if--

(A) the disclosure was made by the inventor or co-inventor, or another person who obtained the invention as a result of the direct or indirect disclosure of the object by the inventor or co-inventor; or

(B) Prior to the disclosure, the disclosed object has been publicly disclosed by the inventor or co-inventor, or by another person who has obtained the invention as a result of the direct or indirect disclosure of the object by the inventor or co-inventor."

It can be seen from this that the grace period rule of the patent law after AIA is that the disclosure made by the inventor within one year before the filing date does not belong to the prior art; Or, the inventor and others have disclosed within one year before the filing date, but the inventor's disclosure is earlier than the disclosure of others, then the disclosure of others does not belong to the prior art.

The main points are: First, the grace period of Article 102 of the Patent Law after AIA is still one year, and its key date is the "effective application date". This point is basically the same as Article 102 (B) of the previous Patent Law. Secondly, the disclosure of the inventor involved therein includes the disclosure made by the inventor himself, or by the co-inventor, or by others who have acquired the invention as a result of the direct or indirect disclosure of the object by the inventor or co-inventor. It can be seen that the disclosure made by others who have learned of the invention as a result of the inventor's disclosure has the same effect as the inventor's disclosure. Third, this grace period rule makes the U.S. patent law effectively adopt a "first-to-disclose" (first-to-disclosure) system. This is also illustrated by the legislative evolution of the AIA. The report of the United States Congress states that "the Commission recognizes that the United States should move to a first-to-apply system of inventors, but the Commission also recognizes that the restrictions inherent in the strict first-to-apply system may appear too severe when considering the nature of invention and research and development, even with the grace period rule for inventors. To this end, the present law incorporates a number of exceptions to the prior art. The first exception is the 'first-to-disclose exception of Section 102 (B)(1)(B). This exception effectively creates a first-to-disclose rule".

Source:http://www.cnki.com.cn/Article/CJFDTotal-ZSCQ201304014.htm