Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

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”?

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Beach Boys Songs Written Decades Ago Triggered Current Quarrel With Lawyers Image

There's current litigation in the ongoing Beach Boys litigation saga. A lawsuit filed in 2019 against Nevada residents Mike Love and his wife Jacquelyne in the U.S. District Court for the District of Nevada that alleges inaccurate payment by the Loves under the retainer agreement and seeks $84.5 million in damages.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Transfer Tax Implications on Real Property Leases Image

The real property transfer tax does not apply to all leases, and understanding the tax rules of the applicable jurisdiction can allow parties to plan ahead to avoid unnecessary tax liability.