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[Opto]

Hello,


Does newly re-drafted sec. 102 now exclude the limitation of some prior art being ineligible if not from the United States under previous limitations of 102(a) and 102(b)?

newly drafted statute 35 U.S.C. § 102 states,

"Sec. 102. Conditions for patentability; novelty

(a)    Novelty; Prior Art- A person shall be entitled to a patent unless—

1.    the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
 
2.    the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
 

What will be considered the extent of  "available to the public" now?

[patentatt]

Hello,


Does newly re-drafted sec. 102 now exclude the limitation of some prior art being ineligible if not from the United States under previous limitations of 102(a) and 102(b)?

newly drafted statute 35 U.S.C. § 102 states,

"Sec. 102. Conditions for patentability; novelty

(a)    Novelty; Prior Art- A person shall be entitled to a patent unless—

1.    the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
 
2.    the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
 

What will be considered the extent of  "available to the public" now?

Yes, patent reform eliminates the requirement that "the invention was known or used by others in this country" in current 102a, and eliminates the requirement that the invention was "in public use or on sale in this country" in current 102b.

[NJ Patent1]

Opto:  I have not consulted USCAN for all committee reports, etc.  But, on the face of the AIA, I see no express Congressional intent to alter case law concerning what is/is not "publicly available".  If one would want to (i.e reference would have commended itself to attention of PHOSA) look for it and, with diligent (superhuman?) effort could find / have found it, it is publicly available. 

[JimIvey]

I think we'll have to wait for some caselaw to really understand what that means, but what comes to mind for me is the former requirement of a "printed publication."  I recall some case in which a powerpoint presentation to a small group of people without any paper (or on line) handouts -- or perhaps a display board at a trade show with no handouts -- was not a "printed publication."  I suspect those acts might now be anticipatory.  However, it might not change at all if asking an attendee about the presentation after-the-fact doesn't really make the material publicly available.  At the very least, I'd consider that issue open for reinterpretation.

And, at first glance, I agree with others re the absence of "in this country".

Regards.

[Isaac]

I think we'll have to wait for some caselaw to really understand what that means, but what comes to mind for me is the former requirement of a "printed publication."  I recall some case in which a powerpoint presentation to a small group of people without any paper (or on line) handouts -- or perhaps a display board at a trade show with no handouts -- was not a "printed publication." 

On the other hand, I can recall a case (In re Kopfenstein) where a display board at a trade show was considered a printed publication under 102(b).

[Yak]

According to MPEP 2128.01, a publicly displayed document where persons of ordinary skill in the art could see it and are not precluded from copying it can constitute a "printed publication," even if it is not disseminated by the distribution of reproductions or copies or indexed in a library or database. The key inquiry is whether or not a reference has been made "publicly accessible."

In Klopfenstein, prior to the critical date, a fourteen-slide presentation disclosing the invention was printed and pasted onto poster boards. The printed slide presentation was displayed with no confidentiality restrictions for approximately three cumulative days at two different industry events. The court noted that "an entirely oral presentation that includes neither slides nor copies of the presentation is without question not a 'printed publication' for the purposes of 35 U.S.C. § 102(b).  Furthermore, a presentation that includes a transient display of slides is likewise not necessarily a 'printed publication.'" 

In resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a "printed publication" under 35 U.S.C. 102(b), the court considered the following factors: "the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied." Upon reviewing the above factors, the court in Klopfenstein concluded that the display "was sufficiently publicly accessible to count as a 'printed publication.'"

I would suspect interpretation of the new 102 will use similar logic to determine what would be "otherwise available to the public" without the printed publication requirement?

[Robert K S]

The basic inquiry should always be whether the public was taught how to make and use the invention--or at least given sufficient hint so as to achieve the invention without undue experimentation.  Thus, it is logical that a sale is statutorily anticipatory because presumably the public buyer could reverse-engineer the invention and thus learn how to make and use it.  It is also logical that an offer for sale is anticipatory (according to judge-made law) because there is or would have been a contractual obligation to sell, and we don't want inventors to be able to take out of the public domain something that was already placed in it by means of an unduly delayed patent, which would allow them to profit from a patent monopoly for more than the statutorily permitted "limited time".

Any new law that says "if you even so much as show a picture of this thing's exterior casing and describe what it's for without saying how it works" (as in at a trade show or press conference) is taking things a step too far, IMHO.