[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]
Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless –
- (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
I. “KNOWN OR USED”
A.“Known or Used” Means Publicly Known or Used
“The statutory language ‘known or used by others in this country’ [pre-AIA 35 U.S.C. 102(a)], means knowledge or use which is accessible to the public.” Carellav. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986). The knowledge or use is accessible to the public if there has been no deliberate attempt to keep it secret. W. L. Gore & Assoc. v.Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).
B.Another’s Sale of a Product Made by a Secret Process Can Be a Pre-AIA 35 U.S.C. 102(a) Public Use if the Process Can Be Determined by Examining the Product
“The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” But a secret use of the process coupled with the sale of the product does not result in a public use of the process unless the public could learn the claimed process by examining the product. Therefore, secret use of a process by another, even if the product is commercially sold, cannot result in a rejection under pre-AIA 35 U.S.C. 102(a) if an examination of the product would not reveal the process. Id.
II. “IN THIS COUNTRY”Only Knowledge or Use in the U.S. Can Be Used in a Pre-AIA 35 U.S.C. 102(a) Rejection
The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use “in this country.” Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a). In reEkenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). Note that the changes made to pre-AIA 35 U.S.C. 104 by NAFTA (Public Law 103-182) and Uruguay Round Agreements Act (Public Law 103-465) do not modify the meaning of “in this country” as used in pre-AIA 35 U.S.C. 102(a) and thus “in this country” means in the United States only and does not include other WTO or NAFTA member countries for purposes of pre-AIA 35 U.S.C. 102(a) rejections.
III. “BY OTHERS”“Others” Means Any Combination of Authors or Inventors Different From the Inventive Entity
The term “others” in pre-AIA 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be “by others.” This holds true for all types of references eligible as prior art under pre-AIA 35 U.S.C. 102(a) including publications as well as public knowledge and use. Any other interpretation of pre-AIA 35 U.S.C. 102(a) “would negate the one year [grace] period afforded under § 102(b).” In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).
IV. “PATENTED IN THIS OR A FOREIGN COUNTRY”
See MPEP § 2126 for information on the use of secret patents as prior art.