Prior Art  What is prior art?  Prior art = certain types of knowledge defined by 102(a)-(g) that may operate to defeat patentability or invalidate a patent  To be relevant, art must fall within 102  102 prior art, however, does not necessarily have to anticipate any claim 1

Novelty Requirements  Certain activities before DOI constitute prior art  DOI = conception + diligence to RTP  Conception: definite and permanent idea of entire invention  Diligence: must be continuous and begin prior to conception by other and extend to his RTP  RTP  Constructive  Filing date of completed application  Actual  Invention worked for intended purpose  If any of these activities occur before DOI, then invention may not be novel and not entitled to patent (or patent may be invalid) 2

Activities Before DOI That Constitute Prior Art  102(a) – public prior art (first-to-invent rule)  Known or used by others in US  Patented anywhere  Printed publication anywhere  102(e)-(g) – secret prior art  102(e): earlier( than DOI) application published or issues  102(f): derived from true inventor  102(g)(2)  Applies only to invention made in US  First to RTP entitled to patent unless... 3

Statutory Bars  Certain activities constitute statutory bars  102(b), (c), (d)  102(b): activities before critical date (> 1 year before filing date of application)  102(c): abandonment  102(d): delay  What happens to a patent where the inventor conceived > 1 year before filing and there was a public use of anticipating art after inventor’s conception but more than a year before inventor filed? 4

Corroboration  For establishing that art is prior art  Corroboration of oral evidence of prior invention is the general rule  RTI case is example of role corroboration can play  For establishing inventor’s date of conception  Inventor’s testimony standing alone is insufficient to prove conception  For establishing co-inventorship  Corroborating evidence is required of any asserted contributions to conception of the invention  For establishing diligence  Corroboration needed  For establishing actual reduction to practice  Corroboration needed 5