Novelty

35 U.S.C. 102

Conditions for patentability; novelty.

(a) NOVELTY; PRIOR ART.—A person shall be entitled

to a patent unless—

(1) the claimed invention was patented,

described in a printed publication, or in public use, on sale, or

otherwise available to the public before the effective filing date of the

claimed invention; or

(2) the claimed invention was described in a

patent issued under

section 151

, or in an

application for patent published or deemed published under

section 122(b)

, in which the patent or

application, as the case may be, names another inventor and was

effectively filed before the effective filing date of the claimed

invention.

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE

THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1

year or less before the effective filing date of a claimed invention

shall not be prior art to the claimed invention under subsection

(a)(1)

if—

(A) the disclosure was made by the

inventor or joint inventor or by another who obtained the subject

matter disclosed directly or indirectly from the inventor or a

joint inventor; or

(B) the subject matter disclosed had,

before such disclosure, been publicly disclosed by the inventor or

a joint inventor or another who obtained the subject matter

disclosed directly or indirectly from the inventor or a joint

inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND

PATENTS.—A disclosure shall not be prior art to a claimed invention under

subsection

(a)(2)

if—

(A) the subject matter disclosed was

obtained directly or indirectly from the inventor or a joint

inventor;

(B) the subject matter disclosed had,

before such subject matter was effectively filed under subsection

irectly from the inventor or a joint

inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND

PATENTS.—A disclosure shall not be prior art to a claimed invention under

subsection

(a)(2)

if—

(A) the subject matter disclosed was

obtained directly or indirectly from the inventor or a joint

inventor;

(B) the subject matter disclosed had,

before such subject matter was effectively filed under subsection

(a)(2)

, been

publicly disclosed by the inventor or a joint inventor or another

who obtained the subject matter disclosed directly or indirectly

from the inventor or a joint inventor; or

(C) the subject matter disclosed and

the claimed invention, not later than the effective filing date of

the claimed invention, were owned by the same person or subject to

an obligation of assignment to the same person.

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH

AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to

have been owned by the same person or subject to an obligation of assignment to

the same person in applying the provisions of subsection

(b)(2)(C)

if—

(1) the subject matter disclosed was

developed and the claimed invention was made by, or on behalf of, 1 or

more parties to a joint research agreement that was in effect on or

before the effective filing date of the claimed invention;

(2) the claimed invention was made as a

result of activities undertaken within the scope of the joint research

agreement; and

(3) the application for patent for the

claimed invention discloses or is amended to disclose the names of the

parties to the joint research agreement.

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS

PRIOR ART.—For purposes of determining whether a patent or application for

patent is prior art to a claimed invention under subsection

dertaken within the scope of the joint research

agreement; and

(3) the application for patent for the

claimed invention discloses or is amended to disclose the names of the

parties to the joint research agreement.

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS

PRIOR ART.—For purposes of determining whether a patent or application for

patent is prior art to a claimed invention under subsection

(a)(2)

, such patent or application shall be considered

to have been effectively filed, with respect to any subject matter described in

the patent or application—

(1) if paragraph (2) does not apply, as of

the actual filing date of the patent or the application for patent; or

(2) if the patent or application for patent

is entitled to claim a right of priority under

section

119

,

365(a)

, or

365(b)

or to claim the benefit of an earlier

filing date under

section 120

,

121

, or

365(c)

, based upon 1

or more prior filed applications for patent, as of the filing date of the

earliest such application that describes the subject matter.

35 U.S.C. 102 (pre-AIA)

Conditions for patentability; novelty and loss of right to

patent.

A person shall be entitled to a patent unless —

(a) the invention was known or used by others in this country, or

patented or described in a printed publication in this or a foreign country,

before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed

publication in this or a foreign country or in public use or on sale in this

country, more than one year prior to the date of the application for patent in

the United States, or

(c) he has abandoned the invention, or

described in a printed publication in this or a foreign country,

before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed

publication in this or a foreign country or in public use or on sale in this

country, more than one year prior to the date of the application for patent in

the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or

was the subject of an inventor’s certificate, by the applicant or his legal

representatives or assigns in a foreign country prior to the date of the

application for patent in this country on an application for patent or

inventor’s certificate filed more than twelve months before the filing of the

application in the United States, or

(e) the invention was described in — (1) an application for

patent, published under

section 122(b)

, by another

filed in the United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the

United States before the invention by the applicant for patent, except that an

international application filed under the treaty defined in

section

351(a)

shall have the effects for the purposes of this

subsection of an application filed in the United States only if the

international application designated the United States and was published under

Article

21(2)

of such treaty in the English language; or

(f) he did not himself invent the subject matter sought to be

patented, or

nternational application filed under the treaty defined in

section

351(a)

shall have the effects for the purposes of this

subsection of an application filed in the United States only if the

international application designated the United States and was published under

Article

21(2)

of such treaty in the English language; or

(f) he did not himself invent the subject matter sought to be

patented, or

(g)(1) during the course of an interference conducted under

section

135

or

section 291

, another

inventor involved therein establishes, to the extent permitted in

section

104

, that before such person’s invention thereof the

invention was made by such other inventor and not abandoned, suppressed, or

concealed, or (2) before such person’s invention thereof, the invention was

made in this country by another inventor who had not abandoned, suppressed, or

concealed it. In determining priority of invention under this subsection, there

shall be considered not only the respective dates of conception and reduction

to practice of the invention, but also the reasonable diligence of one who was

first to conceive and last to reduce to practice, from a time prior to

conception by the other.

A claimed design may be rejected under

35 U.S.C.

102

when the invention is anticipated (or is “not novel”) over a

disclosure that is available as prior art. In design patent applications, the factual

inquiry in determining anticipation over a prior art reference is the same as in utility

patent applications. That is, the reference “‘must be identical in all material

respects.’”

Hupp v. Siroflex of America Inc.,

122 F.3d 1456, 43

USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the

prior art design must be substantially the same.

Door-Master Corp. v.

Yorktowne, Inc.,

256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001)

(citing

Gorham Mfg. Co. v. White,

81 U.S. 511, 528 (1871)).

In

International Seaway Trading Corp. v.

Walgreens Corp.,

589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir

d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the

prior art design must be substantially the same.

Door-Master Corp. v.

Yorktowne, Inc.,

256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001)

(citing

Gorham Mfg. Co. v. White,

81 U.S. 511, 528 (1871)).

In

International Seaway Trading Corp. v.

Walgreens Corp.,

589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir.

2009), the Federal Circuit held that the ordinary observer test, the test used for

infringement, is “the sole test for anticipation.” Under the ordinary observer test,

“‘if, in the eye of an ordinary observer, giving such attention as a purchaser usually

gives, two designs are substantially the same, if the resemblance is such as to deceive

such an observer, inducing him to purchase one supposing it to be the other, the first

one patented is infringed by the other.’”

Gorham,

81 U.S. at 528. In

Egyptian Goddess,

an

en banc

panel of the

Federal Circuit "characteriz[ed] the ordinary observer as being ‘deemed to view the

differences between the patented design and the accused product in the context of the

prior art.’”

Seaway,

589 F.3d at 1239-40, 93 USPQ2d at 1005, quoting

Egyptian Goddess Inc. v. Swissa Inc.,

543 F.3d 665, 676, 88 USPQ2d

1658, 1666-67 (Fed. Cir. 2008)

(en banc)

. The court also explained

that “‘when the claimed design is close to the prior art designs, small differences

between the accused design and the claimed design are likely to be important to the eye

of the hypothetical ordinary observer.’”

Id.

The ordinary observer test requires consideration of the

design as a whole. See

Seaway,

589 F.3d at 1243, 93 USPQ2d at 1008;

Egyptian Goddess,

543 F.3d at 677, 88 USPQ2d 1667. In applying the

ordinary observer test, “determine whether ‘the deception that arises is a result of the

similarities in the overall design not of similarities in ornamental features in

isolation.’” See

Richardson v. Stanley Works Inc.,

597 F.3d 1288,

1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing

Amini Innovation Corp. v

, 93 USPQ2d at 1008;

Egyptian Goddess,

543 F.3d at 677, 88 USPQ2d 1667. In applying the

ordinary observer test, “determine whether ‘the deception that arises is a result of the

similarities in the overall design not of similarities in ornamental features in

isolation.’” See

Richardson v. Stanley Works Inc.,

597 F.3d 1288,

1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing

Amini Innovation Corp. v.

Anthony California Inc.,

439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed.

Cir. 2006) (holding that the overall infringement test is not to be converted to an

element-by-element comparison when factoring out the functional aspects of various

design elements). See

Apple Inc. v. Samsung Elecs. Co.,

786 F.3d 983,

998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015);

Ethicon Endo-Surgery, Inc. v.

Covidien, Inc.,

796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir.

2015); and

Sport Dimension, Inc. v. Coleman Co. Inc.,

820 F.3d, 1316,

1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is

a comparison taking into account significant differences between the two designs, not

minor or trivial differences that necessarily exist between any two designs that are not

exact copies of one another.”

Seaway,

589 F.3d at 1243, 93 USPQ2d at

1008. “Just as minor differences between a patented design and an accused article's

design cannot, and shall not, prevent a finding of infringement, so too minor

differences cannot prevent a finding of anticipation.”

Id.

(internal

quotation marks omitted).

“A design claim is limited to the article of manufacture

identified in the claim; it does not broadly cover a design in the abstract.”

In re SurgiSil, L.L.P.,

14 F.4th 1380, 1382, 2021 USPQ2d 1008

(Fed. Cir. 2021). See also

MPEP § 1502

. In

SurgiSil,

the Federal Circuit reversed an anticipation rejection

of a lip implant over an art tool because it determined that the Board's anticipation

finding “rests on an erroneous interpretation of the claim's scope.”

Id

fied in the claim; it does not broadly cover a design in the abstract.”

In re SurgiSil, L.L.P.,

14 F.4th 1380, 1382, 2021 USPQ2d 1008

(Fed. Cir. 2021). See also

MPEP § 1502

. In

SurgiSil,

the Federal Circuit reversed an anticipation rejection

of a lip implant over an art tool because it determined that the Board's anticipation

finding “rests on an erroneous interpretation of the claim's scope.”

Id.

The court reasoned that where “[t]he claim language recites ‘a

lip implant,’” and “the application’s figure depicts a lip implant, … the claim is

limited to lip implants and does not cover other articles of manufacture.”

Id.

When a claim is rejected under

35 U.S.C. 102

as being unpatentable

over prior art, those features of the design which are functional and/or hidden during

end use may not be relied upon to support patentability. See

In re

Cornwall,

230 F.2d 457, 109 USPQ 57 (CCPA 1956);

Jones v. Progress

Ind., Inc.,

163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958). Further, in a

rejection of a claim under

35 U.S.C. 102

, mere differences in

functional considerations do not negate a finding of anticipation when determining

design patentability. See

Black & Decker, Inc. v. Pittway Corp.,

636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). See also

In re

Zonenstein,

172 F.2d 599, 80 USPQ 522, 523 (CCPA 1949) (“Patentability of a

design cannot be predicated on size or utility.”).

It is not necessary for the examiner to cite or apply prior art to show

that functional and/or hidden features are old in the art as long as the examiner has

properly relied on evidence to support the

prima facie

lack of

ornamentality of these individual features. If applicant wishes to rely on functional or

hidden features as a basis for patentability, the same standard for establishing

ornamentality under

35

U.S.C. 171

must be applied before these features can be given any

patentable weight. See

MPEP § 1504.01(c)

.

In evaluating a statutory bar based on

pre-AIA 35 U.S.C

vidence to support the

prima facie

lack of

ornamentality of these individual features. If applicant wishes to rely on functional or

hidden features as a basis for patentability, the same standard for establishing

ornamentality under

35

U.S.C. 171

must be applied before these features can be given any

patentable weight. See

MPEP § 1504.01(c)

.

In evaluating a statutory bar based on

pre-AIA 35 U.S.C.

102(b)

, the experimental use exception to a statutory bar for

public use or sale (see

MPEP § 2133.03(e)

) does not usually apply for design patents.

See

In re Mann,

861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988).

However,

Tone Brothers, Inc. v. Sysco Corp.,

28 F.3d 1192, 1200, 31

USPQ2d 1321, 1326 (Fed. Cir. 1994) held that “experimentation directed to functional

features of a product also containing an ornamental design may negate what otherwise

would be considered a public use within the meaning of section 102(b).” See

MPEP §

2133.03(e)(6)

.

Registration of a design abroad is considered to be equivalent to

patenting for priority purposes under

35 U.S.C. 119(a)

-

(d)

and for prior

art purposes

pre-AIA

35 U.S.C. 102(d)

, whether or not the foreign grant is published.

(See

Ex parte Lancaster,

151 USPQ 713 (Bd. App. 1965);

Ex

parte Marinissen,

155 USPQ 528 (Bd. App. 1966);

Appeal No. 239-48,

Decided April 30, 1965,

151 USPQ 711, (Bd. App. 1965);

Ex parte

Appeal decided September 3, 1968

, 866 O.G. 16 (Bd. App. 1966). The basis of

this practice is that if the foreign applicant has received the protection offered in

the foreign country, no matter what the protection is called (“patent,” “Design

Registration,” etc.), if the United States application is timely filed, a claim for

priority will vest. If, on the other hand, the U.S. application is not timely filed, a

statutory bar arises under

pre-AIA 35 U.S.C. 102(d)

as modified

by

35 U.S.C.

172

. In order for the filing to be timely for priority purposes

and to avoid possible statutory bars, the U.S

e protection is called (“patent,” “Design

Registration,” etc.), if the United States application is timely filed, a claim for

priority will vest. If, on the other hand, the U.S. application is not timely filed, a

statutory bar arises under

pre-AIA 35 U.S.C. 102(d)

as modified

by

35 U.S.C.

172

. In order for the filing to be timely for priority purposes

and to avoid possible statutory bars, the U.S. design patent application must be made

within 6 months of the foreign filing. See also

MPEP § 1504.10

.

The laws of each foreign country vary in one or more respects.

The following table sets forth the dates on which design rights can be

enforced in a foreign country (INID Code (24)) and thus, are also useable in a

pre-AIA 35 U.S.C.

102(d)

rejection as modified by

35 U.S.C. 172

. It

should be noted that in many countries the date of registration or grant is the filing

date.

Country or Organization

Date(s) Which Can Also Be Used for

35

U.S.C. 102(d)

Purposes

1

(INID Code (24))

Comment

AT-Austria

Protection starts on the date of

publication of the design in the official gazette

AU-Australia

Date of registration or grant which is the

filing date

BG-Bulgaria

Date of registration or grant which is the

filing date

BX-Benelux (Belgium, Luxembourg, and the

Netherlands)

Date on which corresponding application

became complete and regular according to the criteria set by the law

CA-Canada

Date of registration or grant

CH-Switzerland

Date of registration or grant which is the

filing date

Minimum requirements: deposit application,

object, and deposit fee

CL-Chile

Date of registration or grant

CU-Cuba

Date of registration or grant which is the

filing date

CZ-Czechia

Date of registration or grant which is the

filing date

DE-Germany

Date of registration or grant

The industrial design right can be enforced

by a court from the date of registration although it is in force earlier (as

from the date of filing—as defined by law)

on,

object, and deposit fee

CL-Chile

Date of registration or grant

CU-Cuba

Date of registration or grant which is the

filing date

CZ-Czechia

Date of registration or grant which is the

filing date

DE-Germany

Date of registration or grant

The industrial design right can be enforced

by a court from the date of registration although it is in force earlier (as

from the date of filing—as defined by law).

DK-Denmark

Date of registration or grant which is the

filing date

EG-Egypt

Date of registration or grant which is the

filing date

ES-Spain

Date of registration or grant

FI-Finland

Date of registration or grant which is the

filing date

FR-France

Date of registration or grant which is the

filing date

GB-United Kingdom

Date of registration or grant which is the

filing date

Protection arises automatically under the

Design Right provision when the design is created. Proof of the date of the

design creation needs to be kept in case the design right is challenged. The

protection available to designs can be enforced in the courts following the

date of grant of the Certificate of Registration as of the date of

registration which stems from the date of first filing of the design in the

UK or, if a priority is claimed under the Convention, as another country.

HU-Hungary

Date of registration or grant

With retroactive effect as from the filing

date

JP-Japan

Date of registration or grant

KR-Republic of Korea

Date of registration or grant

MA-Morocco

Date of registration or grant which is the

filing date

MC-Monaco

Date of registration or grant which is the

filing date

Date of prior disclosure declared on

deposit

NO-Norway

Date of registration or grant which is the

filing date

OA-African Intellectual Property

Organization (OAPI) (Benin, Burkina Faso, Cameroon, Central African

Republic, Chad, Congo, Cote d`Ivoire, Gabon, Guinea, Mali, Mauritania,

Niger, Senegal, and Togo)

Date of registration or grant which is the

filing date

PT-Portugal

Date of registration or grant

RO-Romania

Date of registration or grant which is the

filing date

RU-R

or grant which is the

filing date

OA-African Intellectual Property

Organization (OAPI) (Benin, Burkina Faso, Cameroon, Central African

Republic, Chad, Congo, Cote d`Ivoire, Gabon, Guinea, Mali, Mauritania,

Niger, Senegal, and Togo)

Date of registration or grant which is the

filing date

PT-Portugal

Date of registration or grant

RO-Romania

Date of registration or grant which is the

filing date

RU-Russian Federation

Date of registration or grant which is the

filing date

SE-Sweden

Date of registration or grant

TN-Tunisia

Date of registration or grant which is the

filing date

TT-Trinidad and Tobago

Date of registration or grant which is the

filing date

WO-World Intellectual Property Organization

(WIPO)

Subject to Rule 14.2 of the Regulations (on

defects), the International Bureau enters the international deposit in the

International Register on the date on which it has in its possession the

application together with the items required. Reproductions, samples, or

models pursuant to Rule 12, and the prescribed fees.

1

Based on information taken from the “Survey of

Filing Procedures and Filing Requirements, as well as of Examination Methods

and Publication Procedures, Relating to Industrial Designs” as adopted by

the PCIPI Executive Coordination Committee of the World Intellectual

Property Organization (WIPO) at its fifteenth session on November 25,

1994.

Rejections under

pre-AIA 35 U.S.C. 102(d)

as modified

by

35 U.S.C.

172

should only be made when the examiner knows that the

application for foreign registration/patent has actually issued before the U.S. filing

date based on an application filed more than six (6) months prior to filing the

application in the United States. If the grant of a registration/patent based on the

foreign application is not evident from the record of the U.S. application or from

information found within the preceding charts, then the statement below should be

included in the first action on the merits of the application: