6. Novelty and Statutory Bars

Patents / Biotechnology / US Biotechnology Practice

The relevant provisions on both novelty and statutory bars are set out in 35 USC 102. They are more complicated than in many other countries but may be summarized in the following table:

Section	What done	By whom	Where	When
102(a)	Known or used Patented or published	Others "	In U.S anywhere	Before invention "
102(b)	Patented or published Public use or sale	Anyone "	Anywhere in U.S	more than 1 year before U.S filing
102(d)	Foreign patent appl. filed ⁺	Inventor, etc.	outside U.S	more than 1 year before U.S filing#
102(e)	U.S. patent appl. filed on which a patent granted	Others	in U.S.	Before invention
102(g)(1)	Prior invention	Others who file in US	in WTO	Before invention
102(g)(2)	Prior invention	Others	in U.S.	Before invention

⁺Case law holds that it is not necessary for the same invention to be claimed in the foreign application in the same terms as in the United States simply that they should both be generally directed at the same invention. [86]

# additionally the foreign patent must actually have been granted before the U.S. application is filed. Convention priority does not help in this case.

§ publications of pending applications designating the United States which are published in English will also be relevant prior art under this provision.

We will not dwell in detail on these issues but a few comments may be useful on novelty issues that are unique to the United States.

[86] See In re Kathawala, 28 USPQ2d 1785 (Fed. Cir. 1993). The Court commented:

It would be contrary to the policy of the statute to permit an applicant to file a foreign application on an invention that can be claimed by four related types of claims, obtain grant of whatever rights were available in the foreign country and then file an application in the United States after the foreign patent has issues and more than one year after the foreign filing date on the same invention with claims directed to those aspects of the invention that were unpatentable in the foreign county. That would ... frustrate the policy underlying section 102(d), which is to encourage the filing of applications in the United States within one year of a counterpart patent application.

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