General. The following hypothetical examples teach this concept:
Hypothetical Example No. 1. Odd told his attorney not to begin work on a patent application on his invention because he had definitely decided to abandon the invention and dedicate it to the public. Later, Odd changed his mind and filed a U.S. patent application on the invention himself. When he got in trouble prosecuting the application, he asked the same attorney to help him out. The attorney reminded Odd that both he and Odd had a duty to disclose to the USPTO the fact that Odd had once abandoned the invention and that the act of abandonment made the invention unpatentable under 35 U.S.C. 102(c).
Hypothetical Example No. 2. Marie had filed a patent application on her invention almost two years ago. During prosecution, she had a serious illness that put her in the hospital for over a year. When she returned to her home, she noted that the Examiner had sent her a notice of abandonment of her patent application for failure to respond to an Office action. Mary was able to revive the application because abandonment of the application was unavoidable and she never intended to abandon her invention [MPEP 711.03(c)].
Hypothetical Example No. 3. James posts a disclosure of his invention on his Web site along with a statement that he intends to abandon the invention and not further pursue it. William sees the posting and decides to start making and selling the invention. When James sees how much money William is making, he decides to file a U.S. patent application on the invention. When he gives a copy of a printout of his Web site to his attorney, his attorney advises James not to file because claims to the invention would be rejected under 35 U.S.C. 102(c).
Hypothetical Example No. 4. Sybilla invented a widget and did not disclose her invention publicly. She did, however, submit a disclosure to the USPTO under its Disclosure Document Program (MPEP 1706). Although the USPTO destroyed the document after two years had past, Sybilla submitted the copy of the document that the USPTO had returned to her to the Examiner during the prosecution of a U.S. patent application that she had filed 23 years after her discovery. Surprisingly, priority of invention was not an issue in the case. The Examiner was correct in not inferring abandonment of her invention had occurred because of the lapse of time between the time her invention was made and her filing date. Sybilla was granted a patent on her invention.
Case Law. The following examples from U.S. case law teach this concept:
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