What Does It Mean to Anticipate an Invention?

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An invention is said to be anticipated when it is too similar to an earlier invention to be considered novel. Because novelty is a requirement for patentability, anticipated inventions are not patentable.

[Note, the rules regarding anticipation, below, will change dramatically in March 2013 when the U.S. switches to a first-to-file system (as a result of passage of the America Invents Act). The current one-year on sale bar—that permits sale or disclosure of the claimed invention less than one year before filing—is terminated, although the Act establishes a limited one-year grace if the inventor (or anyone who obtained the subject matter from the inventor) made certain disclosures of the claimed invention. The novelty and nonobviousness sections of the patent law (Sections 102 and 103) are amended and existing provisions relating to inventions made abroad and statutory invention registration are terminated. Until March 2013, you can rely on the standards provided below.]

Currently, an invention may be anticipated in any of the following ways:

  • Prior publication in such writings as a news article, trade journal article, academic thesis, or prior patent. For example, Fred invents a low-cost kit that permits a car’s driver to monitor ten different engine functions while driving. If all of the primary characteristics (elements) of this kit had been described by someone else in a publication or patent before Fred -invented his kit, the invention would be considered anticipated by the -published -reference and would be barred from receiving a patent.
  • By existence of a prior invention, if all significant elements of the later -invention are found in an earlier one prior to the date of invention or the application’s filing date. Suppose Sammy “invents” an electric generator that is driven by the kinetic energy of a car’s moving wheels. If all basic elements used by Sammy in his “invention” can be found in a prior -invention (whether patented or not) by Jake, who used his invention openly—without suppressing or concealing it—Sammy’s generator has been anticipated.
  • By placing the invention on sale more than one year prior to an application’s being filed. “On sale” means not only an actual sale, but any offer of sale. For example, if Sammy offers to sell his invention to a major car manufacturer more than one year previous to his filing a patent application on it, the -offer will anticipate the invention even if the sale never takes place.
  • By public use or display of the invention more than a year prior to filing the patent application. For example, if Fred publicly demonstrated his kit a year or more prior to filing for a patent, the invention would be considered “anticipated” because the earlier public display would render the invention no longer “novel” at the time of filing the application. However, if the -public demonstrations were predominately for experimental purposes, the one-year period might not apply. In fact, anticipation through public use or display rarely occurs.

Anticipation by a prior invention or printed publication—that is, a prior art reference—can occur only if all of the later invention’s basic elements are -contained in a single invention or a single publication. For example, if a news article describes some elements of an invention, and a prior invention shows the rest, no anticipation has occurred, because no single reference contained all the elements.

In a case involving a new use for a composition, the Court of Appeals for the Federal Circuit (CAFC) held that claims were anticipated when (1) the prior references disclosed each and every element of the claimed invention, and (2) the prior references enabled a person of ordinary skill in the art to practice the invention without undue experimentation (In re Marin Gleave and Maxim Signaevsky, 560 F. 3d 1331 (Fed. Cir. 2009)). In another case, the CAFC held that prior art—in order to anticipate an invention—must not only disclose all elements of a claim, but also must disclose those elements as arranged in the claim. The CAFC analogized to a recipe in which the ingredients must be combined in a certain order. (Net MoneyIn, Inc. v. Verisign, 545 F.3d 1359 (Fed. Cir. 2008)).

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