Patent Law and Practice
Patent Law and Practice tests patentability under 35 U.S.C. §§ 101, 102, 103, and 112, especially AIA novelty and the grace period. Questions turn on dates, the discloser's identity, and whether a disclosure is prior art or excepted.
Eligibility and utility
Section 101 covers processes, machines, manufactures, and compositions of matter. Abstract ideas, laws of nature, and natural phenomena are judicial exceptions. Under Alice/Mayo, ask whether the claim is directed to an exception and, if so, whether the elements individually and as an ordered combination amount to significantly more. Utility must be specific, substantial, and credible.
Novelty and grace period
AIA § 102(a)(1) prior art includes the invention being patented, described in a printed publication, in public use, on sale, or otherwise available before the effective filing date. § 102(a)(2) covers earlier-filed U.S. patents and published applications. Section 102(b)(1) gives a one-year grace period for disclosures by the inventor, a joint inventor, or one who obtained the subject matter from them; § 102(b)(2) provides parallel exceptions plus common ownership.
Obviousness
Section 103 asks whether the differences between the claim and prior art would have been obvious to a person of ordinary skill, considering the art's scope and content, differences, skill level, and secondary considerations (Graham). KSR permits common sense and predictable variation.
Worked example
An inventor presents a device at a trade show on June 1, 2023, and files on April 1, 2024. Her own presentation is excepted under § 102(b)(1)(A). A competitor's independent July 2023 publication of the same device is § 102(a)(1) prior art because the competitor did not obtain it from her, so no exception applies. If the competitor had filed a U.S. application published later, § 102(a)(2) would apply absent a § 102(b)(2) exception.
Traps
Do not import the pre-AIA § 102(b) bar into AIA cases. A grace period does not cover independent third-party disclosures. The on-sale bar can arise from secret commercial activity, and a printed publication must be publicly accessible. "Patent pending" grants no rights.