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The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

Use of an Invention: 'Anticipating'?

By Brian Hoffman

Under U.S. patent law, an inventor is entitled to a patent if the invention is useful, novel, and nonobvious. The “novelty” prong of this tripartite test is controlled by 35 U.S.C. '102, which defines the “prior art” (ie, already existing technology) that can “anticipate,” or render non-novel, the invention. In general, an invention sought to be patented is anticipated when it already exists in the prior art, having been placed there either by a third party or through the inventor's own actions. Under '102, prior use of the invention can anticipate a patent in certain circumstances. Specifically, the statute states that: “A person shall be entitled to a patent unless (a) the invention was … used by others … before the invention thereof by the applicant …; or (b) the invention was … in public use … more than one year prior to the date of the application.”

According to the plain language of the law, '102(a) is satisfied by any use of the invention by someone other than the applicant before the invention by the applicant. In contrast, '102(b) requires a public use of the invention, whether performed by the applicant or a third party, more than a year before the filing date of the patent application. However, as a practical matter, courts require a “public use” under either prong. The key question, therefore, is what constitutes a “public use”?

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