MPEP § 2133 — Pre-AIA 35 U.S.C. 102(b)

Ninth Edition, Revision 01.2024 · last revised R-01.2024

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]

Publications, patents, public uses and sales must occur “more than one year prior to the date of application for patent in the United States” in order to bar a patent under pre-AIA 35 U.S.C. 102(b). However, publications, patents, public uses and sales will not bar a patent if the 1-year grace period otherwise ends on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) and 35 U.S.C. 21(b). The provisions of 35 U.S.C. 21(b) still apply notwithstanding the provisions of 37 CFR 1.6(a)(2) and 37 CFR 1.10, which accord a filing date as of the date of deposit as Priority Mail Express® with the U.S. Postal Service and 37 CFR 1.6(a)(4), which accords a filing date as of the date of submission using the USPTO patent electronic filing system.

If one discloses one's own work more than 1 year before the filing of the patent application, that person is barred from obtaining a patent. In re Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982). The 1-year time bar is measured from the U.S. filing date. Thus, applicant will be barred from obtaining a patent if the public came into possession of the invention on a date before the 1-year grace period ending with the U.S. filing date. It does not matter how the public came into possession of the invention. Public possession could occur by a public use, public sale, a publication, a patent or any combination of these. In addition, the prior art need not be identical to the claimed invention but will bar patentability if it is an obvious variant thereof. In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1966). See MPEP § 2139.01 regarding the effective U.S. filing date of a claimed invention in an application.