Prior Art That Can Be Antedated

Prior art under 102(a) includes only the works of others and thus one s own work does not apply.3 This follows because for 102(a) to apply as prior art, the 

T tile s own work can serve as prior art, just not under the circumstances of 102(a). Sections 102(b), 102(c), and 102(d) are all examples where one s own work can serve to function as prior art, but only under the conditions that each describes. 

Assuming that the patent applicants believe they are the correct and complete list of applicants for the invention and that the additional co-author(s) of the 102(a) reference did not invent any of the claimed subject matter of the patent application, the publication can be removed as a citable 102(a) reference in a couple of different 

4Such a situation might also present an inventorship issue the claimed invention must list all of the inventors and if one of the authors of the paper was also an inventor, then that person needs to be listed on the patent application as well. Note that the criteria for authorship are usually different from the criteria for inventorship much more detail will be provided on this topic in Chapter 4. 

7See MPEP 2132.01 citing 35 U.S.C. 116 third paragraph Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.  

---

Obviousness determination relies on 102 prior art so employment of the prior art in an obviousness determination ( 103) will possess the same general characteristics as use of the prior art in novelty determination ( 102). Thus an obviousness rejection based on 102(a) art can be overcome if the applicant is able to show that he invented the subject matter before the publication or art in question (just as a novelty rejection based on 102(a) can be antedated). Likewise, an obviousness rejection based on art... 

The word probably is used because 102(e) prior art can be antedated by showing prior invention. On the surface, the applicant s chances don t look especially promising because he just filed die patent application, whereas the competitor s patent application just published. Since the normal time from filing a provisional patent application to publication of an application properly claiming priority to that application is approximately 18 months in the United States, there is at least a good chance die competitor actually invented the subject matter before the applicant as well. 

In a similar fashion to 102(a) prior art, 102(e) art can be sworn behind or antedated, except that it is necessary to prove invention before the filing date of the application or even an earlier provisional application. However, 102(e) prior art can also function as 102(a) prior art and, depending on whether it s been published for over a year, it can serve as 102(b) art as well (we will cover 102(b) shortly). You might wonder how many times can you hang somebody with the same piece of prior art and so does it really matter how many different ways the same reference is cited Interestingly enough, it can. Sometimes it is possible to avoid or remove a reference... 

A key element of 102(a) prior art is that it relates to the date of the invention by the applicant. For a 102(a) reference date to effectively block the applicant s work, the 102(a) event must have occurred before the date of the invention by the applicant. Flowever, the provisions of 102(b) provide an important limit to the first-to-invent rule. The section of prior art defined in 102(b) is referred to as the absolute bar because it limits how far one can go in antedating a prior art reference to prove earlier invention in the United States. Specifically, a patent for an invention cannot be obtained in the United States if the invention was patented or described in a printed publication (or in public use or on sale in this country), more than 1 year before the date of application for patent in the United States. Thus, even if the applicant made the invention before the 102(b) event, she will be barred from being granted a patent if she does not file the patent application within 1 year of that 102(b) event. Note that 102(b) does not contain the phrase by others as in 102(a). Thus if an applicant publishes her own invention more than 1 year before filing the application for patent, she will be barred by 102(b) from being eligible to be granted a patent in the United States. Likewise, if a 102(b) event by another occurs, apatent applicant in the United States will not be able to antedate the 102(b) event. 

---