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Prior Art

What is prior art? Prior art = certain types of knowledge defined by

102(a)-(g) that may operate to defeat patentability or invalidate a patent

To be relevant, art must fall within 102 102 prior art, however, does not necessarily have to

anticipate any claim

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Novelty Requirements

Certain activities before DOI constitute prior art DOI = conception + diligence to RTP

Conception: definite and permanent idea of entire invention Diligence: must be continuous and begin prior to conception by

other and extend to his RTP RTP

Constructive Filing date of completed application

Actual Invention worked for intended purpose

If any of these activities occur before DOI, then invention may not be novel and not entitled to patent (or patent may be invalid)

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Activities Before DOI That Constitute Prior Art

102(a) – public prior art (first-to-invent rule) Known or used by others in US Patented anywhere Printed publication anywhere

102(e)-(g) – secret prior art 102(e): earlier( than DOI) application published or issues 102(f): derived from true inventor 102(g)(2)

Applies only to invention made in US First to RTP entitled to patent unless . . .

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Statutory Bars

Certain activities constitute statutory bars

102(b), (c), (d) 102(b): activities before critical date (> 1 year before

filing date of application) 102(c): abandonment 102(d): delay

What happens to a patent where the inventor conceived > 1 year before filing and there was a public use of anticipating art after inventor’s conception but more than a year before inventor filed?

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Corroboration

For establishing that art is prior art Corroboration of oral evidence of prior invention is the general rule RTI case is example of role corroboration can play

For establishing inventor’s date of conception Inventor’s testimony standing alone is insufficient to prove conception

For establishing co-inventorship Corroborating evidence is required of any asserted contributions to

conception of the invention

For establishing diligence Corroboration needed

For establishing actual reduction to practice Corroboration needed