Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[merkaba22]

Forgive me, but I thought I recently read that a patent issued/published within 1 year of a patent application cannot be cited as material prior art during litigation.

Now I can not find that reference to ensure I understood correctly -- can anyone here set me straight on what I thought I read?

[klaviernista]

Whatever you read is incorrect.  "Material" prior art is anything that would qualify as prior art under any of the provisions of 35 U.S.C. 102, and would be considered by a reasonable examiner to be relevant to the patentability of the claims of an application.

References published less than 1 year prior to the filing date of a U.S. application (assuming no claim of priority) would qualify as prior art at least under 35 U.S.C.  102(a).  The only question is whether the reference is relevant to the patentability of the claims in question.

You might be getting hung up on the difference between art that qualifies under one of the "statutory bar" provisions of 35 U.S.C. 102, e.g., 35 U.S.C. 102(b), and art that qualifies under another section, such as 102(a).  An applicant can overcome a reference that qualifies under a NON-stat bar proivision of 102 in a variety of ways, including filing a declaration to "swear behind" the date of the reference.  However, an applicant cannot use all of the same means to overcome a reference qualifying under one of the statutory bar provisions of 102.

Sorry for the general answer, but hopefully it clears up your problem.  If not, let me know and I'll try to explain it in a different way.