“Prior Art? like Picasso?”

Today was the start of week four.

Today was also our first real 102 lecture, featuring such interesting topics as 102 a,b, and e.

If you can reject on a, b, or e, reject on b.

If you can reject on a or e, reject on e.

If you can reject on a, well, ok.

For those of you unfamiliar with 102, it’s the statute that determines what constitutes “prior art.” That is, what sort of publications or previous inventions make a prima facie case that the inventor didn’t invent what he described in his application? I’m going to have to go back over the lecture notes, because we had a … snafu with the lecturer’s schedule, so we had a very rushed introduction. Luckily, we do get copies of the power point.

For potential new hires, this is the important stuff. 102 and 103 are (in my unexperienced opinion) the meat and potatoes of examination. Occasionally you are going to see a perpetual motion machine, or claim language that is incorrect or not enabled in the specification. But where you’re really going to spend your time is in the search, and in determining whether several patents would motivate a PHOSITA to combine them.

To that end, we also had an EAST introduction today, which is the search tool used most widely in the office, overall. It’s actually pretty neat the way they let you combine searches and increase complexity with the query language. It almost seems fun!


2 thoughts on ““Prior Art? like Picasso?””

  1. I don’t know if you’ve gone over this yet, but the reason a rejection under 102(a) is weak is because since you’re only rejecting it because it was known before the invention date (taken to be the date of filing), the inventor need only swear back the invention date. They write up an affadavit saying that they invented it before the date you cite and boom. They’re done.

    This does raise issues at litigation though. First, did they actually invent it when they said they did. If they didn’t they’re in a heap of trouble. Secondly, if they were diligent in their reduction to practice. Meaning, did they do something with it every day until it was patentable.

    Keep up the posting though. As a law student studying for the patent bar, seeing the other side is just cool.

  2. Diligent reduction practice doesn’t require doing “something with it every day until it was patentable.” That’s somewhat of an oversimplification.

    A well drafted 131 affidavit will explain where all of the claimed features are found in the evidence that is submitted. Again, it’s not as simple as “saying that they invented it before the date you cite.” It’s a little more involved than that. Gathering the evidence can be a lot of work. Especially from inventors who aren’t used to keeping thorough records.

    There are some famous cases of inventors falsifying their records to beat dates. They are quite comical.

    Please do keep up the posting though.

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