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102(a) knowledge or use and 102(b) questions
Posted by Anonymous . updated on 2/26/2009
Suppose there was an invention in Japan that was selling there since early 2004 (including via an online store based in Japan), but was not available from a U.S.-based store until late 2005. If you invented the same thing in the U.S. in mid-2005, how can you know whether it's patentable or not?
In other words, someone could have purchased it in Japan and brought it to the U.S. where it could have been used by them, shown to others, etc. -- does this count as prior art under 102(a), and if so, how can you know whether this happened or not?
Or the Japanese online store could have sold it to someone in the U.S. via the web and shipped it to them -- does this create a bar to a U.S. patent under 102(b)? Do overseas online sales to U.S. buyers count as 'on sale in this country'? And again, how could you find out whether this occurred or not, before spending a lot of time and money filing and prosecuting a patent that could get declared invalid during litigation?
Answers (3)
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Isaac
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Quote Suppose there was an invention in Japan that was selling there since early 2004 (including via an online store based in Japan), but was not available from a U.S.-based store until late 2005. ?If you invented the same thing in the U.S. in mid-2005, how can you know whether it's patentable or not?
If it's only that someone could have known, but no one in the US actaully did know, no 102(a) issue is raised. However published sales catelogs in Japan describing the invention would be prior art under 102(a).
Or the Japanese online store could have sold it to someone in the U.S. via the web and shipped it to them -- does this create a bar to a U.S. patent under 102(b)? ?Do overseas online sales to U.S. buyers count as 'on sale in this country'? ?And again, how could you find out whether this occurred or not, before spending a lot of time and money filing and prosecuting a patent that could get declared invalid during litigation? ? ? ?
I guess in theory you could to the same motivated search that your litigation opponent might do, but in actually practice, you scope your search based on what makes economic sense, and you make decisions (that have some risk attached) based on what you find.
I note though that all that's required to trigger 102(b) is an offer to sell the invention in this country. You don't have to find an actual customer.
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emcee
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Thanks, Isaac, for your reply.
A couple of follow-ups:
Wouldn't the sales catalogs in Japan have to fully describe all the details of the invention (how it is made or works) in order to trigger 102(a)? Just saying what it is and showing a picture is not necessarily enough, correct?
Re. the 2nd question, I see the most probable litigation opponent being the Japanese company; they would likely have much more insight into where and when they (and any distributors/retailers) sold this invention than I could, even with a great deal of research... which perhaps just increases my level of risk, maybe there is nothing that can be done about this.
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emcee
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One more thing -- so is putting something for sale on the web automatically a worldwide offer for sale? Or does there have to be some other explicit offer to sell or ship to a particular country or countries?
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