MPEP 2133
Pre-AIA 35 U.S.C. 102(b)

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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2133    Pre-AIA 35 U.S.C. 102(b) [R-07.2015]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]

Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

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  • (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 application for patent in the United States.

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I.    THE 1-YEAR GRACE PERIOD IS EXTENDED TO THE NEXT WORKING DAY IF IT WOULD OTHERWISE END ON A HOLIDAY OR WEEKEND

Publications, patents, public uses and sales must occur "more than one year prior to the date of application for patent in the United States" in order to bar a patent under pre-AIA 35 U.S.C. 102(b). However, applicant’s own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). Despite changes to 37 CFR 1.6(a)(2) and 37 CFR 1.10 which require the PTO to accord a filing date to an application as of the date of deposit as Priority Express Mail® with the U.S. Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant's concurrent right to defer the filing of an application until the next business day when the last day for "taking any action" falls on a Saturday, Sunday, or a federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday).

II.    THE 1-YEAR TIME BAR IS MEASURED FROM THE U.S. FILING DATE

If one discloses his or her own work more than 1 year before the filing of the patent application, that person is barred from obtaining a patent. In re Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982). The 1-year time bar is measured from the U.S. filing date. Thus, applicant will be barred from obtaining a patent if the public came into possession of the invention on a date before the 1-year grace period ending with the U.S. filing date. It does not matter how the public came into possession of the invention. Public possession could occur by a public use, public sale, a publication, a patent or any combination of these. In addition, the prior art need not be identical to the claimed invention but will bar patentability if it is an obvious variant thereof. In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1966). See MPEP § 706.02 regarding the effective U.S. filing date of an application.