© 2003, Dawsey Co., LPA
May 2003

Most inventors are aware of the commonly applied definition of novelty in the patent code, 35 U.S.C., contained in the first two sections of 35 U.S.C. §102. Section (a) bars a patent when the invention was known or used by others in this country, or patented or described in a written publication anywhere in the world, more than a year before invention. Section (b) bars a patent when the invention was patented or described in a written publication anywhere in the world, or when an invention was in public use or on sale in this country more than a year prior to filing a patent application.

Many inventors, however, are unaware of the effect of section (e) of that act, and after learning of its provisions, some can’t believe this is really a part of the patent law!

35 U.S.C. 102(e)(1) bars a patent when an invention has been described in a patent application, and then published under 35 U.S.C. 122(b) (the provision calling for patent applications to be published 18 months after filing). So far, this appears entirely logical, since published applications are searchable and an inventor can at least draw a conclusion as to whether or not a published application anticipates his invention.

However, §102(e)(2) also bars a patent for an invention described in a granted patent filed by another prior to the date of invention of the later invention. The surprise in the law for most inventors comes in the interpretation of the words “filed by another.”

While the words are plain and simple, the ramifications of §102(e) are a bit opaque, and deserve a little reflection. Section (e)(1) bars a patent that has been described in a published application. This is not an illogical requirement, and should also not catch an inventor unaware.

But careful thought about §102(e)(2) makes clear that it bars a patent based on a disclosure that might not be available in any way to an inquiring inventor. Hence the name, “secret prior art.” A theoretical example using real dates may make this clearer, even if it doesn’t make it easier to accept.

Suppose inventor A both invents and files for a patent on a single day, January 2, 2001. Later, Inventor B, having no knowledge of the activities of A, invents, does a diligent patent search, and files; all in one day, on July 2, 2001. Inventor B will have no way of accessing the application of inventor A, which will not be published until July 2, 2002. If Inventor A’s application is granted as a patent on, say, January 2, 2004, this patent will be prior art against Inventor B. It will be later patented and later published, but it will still be prior art, because §102(e)(2) specifically states that such prior art is considered to exist as of the date that the patent application was filed. Again, not the date the issued patent was granted, but the date that it was filed; which given today’s PTO backlog, might be three or more years before issuance.

While this circumstance doesn’t arise too often, inventors are often incensed to hear that prior art, which is in no way accessible to them, can later be cited against them. While not addressing the entire problem, the law does contain some factors that help soften the damage.

First, “secret prior art,” to in fact be, prior art under §102(e)(2), must eventually become part of a granted patent. Applications that are abandoned or otherwise never granted can never be prior art under §102(e)(2). So, if, in our example above, Inventor A abandons his application on December 1, 2003, that application will not stand in Inventor B’s way. This is true even if A’s application was published on July 2, 2002, because the publication date came after B’s date of invention and filing, and §102(e)(2) only applies to patents that are actually granted.

Second, the scope of the effect of §102(e)(2) based on patents stemming from PCT applications is more limited. A U.S. application filed as the result of an initial PCT application can only serve as “secret prior art” if the international application specifically designated the United States and was published in the English language.

There are a few things an inventor can due to blunt the effects of §102(e). As to §102(e)(1), if you can’t document an earlier date of invention, at least file applications as quickly as practical after patent searching, to minimize the chances of new applications being published before your date of constructive reduction to practice. As to §102(e)(2), there isn’t much the average inventor can do. Meticulous records, so often discussed in this newsletter, can be an inventor’s best friend, in case it is necessary to prove a date of invention earlier than the filing date of an application.