Pre-AIA novelty and statutory bars

Applications whose every claim has always had an effective filing date before March 16, 2013 are still examined under pre-AIA 35 U.S.C. 102. The key split: 102(a), (e) and (g) depend on the date of invention and can be sworn behind; 102(b) and (d) depend on the U.S. filing date and cannot.

Patentability: 101, 102, 103 and 1123 min read4 sections

Must-know for the exam

Pre-AIA law applies only if no claim ever had an effective filing date on or after March 16, 2013 (MPEP 2159.01)
102(a): known or used by others in this country, or patented or published anywhere, before the applicant's invention (MPEP 2132)
102(b): patented or published anywhere, or in public use or on sale in this country, more than one year before the U.S. filing date (MPEP 2133)
102(b) is measured from the earliest U.S. benefit date (119(e), 120), never from a foreign priority date (MPEP 2133.01, 2133.02)
102(d): foreign application filed more than 12 months before the U.S. filing and patented before it, by the same applicant (MPEP 2135.01)
102(e): U.S. patents and published applications of others, as of their U.S. filing date; a reference's foreign priority date cannot be used (Hilmer; MPEP 2136.03)
WIPO publications count under pre-AIA 102(e) only if they designated the U.S. and were published in English (MPEP 2136.03)
Rule 131 antedates 102(a) and 102(e) art by earlier reduction to practice, or conception plus diligence (MPEP 715.07)
Rule 131 cannot overcome a statutory bar, or a U.S. patent document claiming the same invention (MPEP 715, 715.05)
Experimental use can negate a public use bar; control and records matter (MPEP 2133.03(e))
Weekend or holiday anniversaries extend the 102(b) year to the next business day (35 U.S.C. 21(b); MPEP 2133)

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Traps that cost marks

Swearing behind a reference that is more than a year older than the filing date.
Using AIA Rule 130 in a pre-AIA application.
Applying the AIA's 102(d) rule, which counts foreign priority dates, to a pre-AIA case.
Measuring the 102(b) year from a foreign priority date.
Treating every use visible to the public as a bar, ignoring experimental purpose.
Measuring 102(d) from the foreign grant date instead of the foreign filing date.
Assuming Rule 131 works against any 102(e) reference.
Applying the AIA's worldwide on-sale rule to a pre-AIA application.

Invention date versus filing date

Under pre-AIA law some prior art is measured against the applicant's date of invention (102(a), (e), (g)) and some against the U.S. filing date (102(b), (d)). Art dated more than one year before the U.S. filing date is a statutory bar: no showing of earlier invention can remove it. Art less than a year before filing can usually be antedated with a 37 CFR 1.131 declaration.

Provision	Measured from	Can be sworn behind?
102(a)	Date of invention	Yes, Rule 131
102(b)	U.S. filing date (U.S. benefit counts)	No
102(d)	U.S. filing date	No
102(e)	Date of invention	Yes, unless the reference claims the same invention

MPEP 715, 2132-2136

Geography and language

•Pre-AIA public use and on-sale bars require activity in this country; foreign printed publications and patents count anywhere.
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