Section 102 - is your invention novel?

Photo by  Tim Green  /  CC BY 4.0

Photo by Tim Green / CC BY 4.0

Section 102 requires that the invention be “novel.” Novelty means that each and every element of the invention must not be present in a single, enabling reference. Under 102(b), certain disclosures are excluded from the prior art, but this section is very limited. For this reason, the inventor should file an application as soon as possible, ideally before any disclosure of the invention is made.  

Section 102

Section 102 of the Patent Act will bar patent protection in certain circumstances, usually involving public disclosure of the invention prior to the earliest effective filing date of the application. The earliest effective filing date is typically the filing date of the application, but applications may claim priority back to prior filed applications.

Exceptions under Section 102

Section 102 contains exceptions which prevent certain disclosures from being applied against the inventor. Excluded disclosures include those made by the inventor or parties who obtain the information from the inventor. Excluded disclosures are not available to the examiner to reject the application.

While there is an exception under 102, it does not offer complete protection. AIA section 102 provides much weaker protections for inventors who disclose and wait to file an application. For example, if an inventor makes a disclosure, and waits the full year to file an application, any intervening disclosure by another can serve as prior art against the inventor. 102(b)(1)’s exclusionary power is “personal,” not a blanket one year grace period for the inventor. Therefore, it is critical for the inventor to file an application as soon as possible, because disclosures after the earliest effective filing date are not prior art.

When does Section 102 apply?

Section 102 (a) precludes patent protection if "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." In short,was the patented invention known or sold before the earliest effective filing date?

A rejection under section 102 requires that the examiner show that each and every element of the claimed invention was present in a single enabling reference which predates the earliest effective filing date of the application. If the examiner is unable to find a single, enabling reference, then section 102 will not apply.

For this reason, section 102 is easier to overcome than section 103 rejections, because the inventor must only show that their invention contains other elements not present in the single enabling prior art. The examiner could combine references under section 103 and reject the application, but may not do so under section 102.

If you have any questions about Section 102 and its application, contact me today.