Examples - Invention Was Described

General. The following hypothetical examples teach this concept:

Hypothetical Example No. 1. Nikola delivers a talk that enables a skilled person to practice his invention in France and distributes copies of his talk. One year and one day later, he files a U.S. patent application and discharges his duty of disclosure to the USPTO by filing an Information Disclosure Statement. The USPTO rejects Nikola's application under 35 U.S.C. 102(b) using a copy of his French talk as a reference.

Hypothetical Example No. 2. An interview of Orville about his widget is published as an article in a British newspaper. He does not file a U.S. patent application on his invention. Abraham independently invents the same widget and files a U.S. patent application on it over a year after the newspaper article reached its readers. The USPTO denies a U.S. patent to Abraham on the widget.

Hypothetical Example No. 3. Dorothea submits a paper on her invention to a technical journal for peer review and publication. The paper is published, but before it reaches its readers, she files a U.S. patent application on the invention. The USPTO grants a patent to Dorothea.

Hypothetical Example No. 4. Sarah has posted an enabling disclosure of her invention on her company's Web site. She knows that the one-year grace period during which she can file a U.S. patent application on her invention is coming to an end on Friday. She files a provisional U.S. patent application on the invention on Friday in the U.S. by means of Express Mail (MPEP 513). She also knows that within 12 months of the filing date of the provisional application, she must file a regular application. The 12 month period ends on Friday which is a Federal holiday within the District of Columbia. She files the regular application the next business day after Friday, which happens to be Monday (MPEP 710.05), again using Express Mail. The USPTO denies a patent to Sarah on her invention because the normal weekend and holiday rule does not apply in this situation (MPEP 505) and she can no longer claim priority in the provisional application.

Case Law. The following examples from U.S. case law teach this concept:

Foster, In re, 343 F.2d 980, 145 USPQ 166 (CCPA 1965), cert. denied, 383 U.S. 966 (1966)
Wyer, In re, 655 F.2d 221, 210 USPQ 790 (CCPA 1981)
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ 2d 1057 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988)

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