Important Advisory: It’s essential to understand that the main emphasis of the patent bar exam will center on the POST-AIA rules. The likelihood of encountering questions exclusively based on Pre-AIA content is minimal, typically one or two at most. Therefore, our detailed exploration will primarily focus on POST-AIA regulations, given their predominant representation on the exam.
Understanding Pre-AIA 35 USC 102:
Before the introduction of AIA, the 35 USC 102 under the Pre-AIA outlined seven pivotal conditions or obstacles to patentability. These conditions can be conveniently remembered using the following mnemonics:
- 35 USC 102 – Mnemonics Overview
- (a) Already or Annual: Refers to actions within the previous year.
- (b) Before or Bar: Indicates statutory bars.
- (c) C or Sea: Denotes abandonment (imagined as a concept set out to sea).
- (d) Deuce: Symbolizes four specific conditions.
- (e) Egress: Indicates actions taken by another entity.
- (f) Fraud: Refers to claiming someone else’s invention as one’s own.
- (g) Gone/Interference: Indicates potential overlap or conflict with other patent claims.
Categorizing the Sections:
- Novelty Sections (a, e, f, g): These conditions question if any actions, similar to the invention at hand, were undertaken by another entity prior to the inventor’s conception date. Challenges emerging from this category usually stem from external parties.
- Remedy: Potential disputes might be resolved by presenting an affidavit that pre-dates the disclosure or invention.
- Statutory Bars (b, d): These barriers arise when the inventor has been perceived to have waited an extended period before filing their U.S. application. The issues in this category are primarily self-inflicted by the inventor.
- Remedy: Unfortunately, there’s no solution. The focal point here is the filing date.
- Abandonment (c): This is not a frequently utilized condition in real-life patent scenarios. Nevertheless, the exam might sporadically feature questions around it.
Key Distinction to Remember:
It’s crucial to grasp that section 102 demands an exact match. Your aim is to identify prior art that encapsulates every single limitation specified in the claims you aim to secure. On the other hand, section 103 offers flexibility, allowing the amalgamation of prior art elements, provided combining them appears obvious to a Person Having Ordinary Skill In The Art (PHOSITA).