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I have a question relating to whether an imported product made in a foreign country by a patented method, before the method was patented, would be prior art to the method patent. That's a mouthful, so below I've provided a hypothetical and accompanying 3 questions.

Assume the following facts:

  • I own a patent on a method of making widgets filed in 2000;
  • I also own a patent on the system used to make the widgets filed in 2000;
  • A competitor practiced the method and used the system in a foreign country in 1998;
  • The competitor did not publish any documents relating to the method or system;
  • However, the competitor imported and sold a widget in the US in 1999;

The questions are:

  1. Is the use of the method prior art? I believe the answer is "NO." [35 U.S.C. 102(b) - "use in this country")]
  2. Is the use of the system prior art? Same as #1
  3. Is the sale of the widget in the US prior art to either of the patents? I believe the answer is "NO," because there is no teaching of the method or system. The widget would, however, be prior art to a patent on the actual product.
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3 Answers

Sounds like a question from the new patent bar exam that will be out soon! Pre AIA F-t-F, anything outside the US had to be a publication or patent in order to be deemed prior art. The phrase in the law "or known in this country" let public knowledge in the U.S. be prior art even if not published. There was also sold or offered for sale - all only in the US. This is the law for something with an effective filing date before March 15, 2013. That is what would apply to you.

If an application was filed on or after that date, the "known in this country" is now changed (there is an "old" section 102 you quoted from and now a "new" 102) essentially to "known anywhere". And, under the old law at least, it was clear that known to the public could be just one person who was not under a duty of confidentiality. So if the US application in question is post AIA F-t-F the distinction could be: is the process kept as a secret by the foreign producer or does it just not happen to be published but the employees who know the process could tell their neighbor without breaking an understanding with the company. Again, this is not applicable to your 2000 application.

Importing a product made with the process, itself, shouldn't be prior art for the process. If there was a way to deduce the process from analyzing the product there would be an argument that the product sitting on U.S. soil "taught" the process.

see, from section 2132 of the Manual for Patent Examination Procedure (MPEP):

“The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” But a secret use of the process coupled with the sale of the product does not result in a public use of the process unless the public could learn the claimed process by examining the product. Therefore, secret use of a process by another, even if the product is commercially sold, cannot result in a rejection under 35 U.S.C. 102(a) if an examination of the product would not reveal the process. Id.

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George, Perfect. Thanks very much for this! –  Kyle Zeller May 25 '13 at 15:45
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yes it will be a prior art see other sections of 102

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This question should be asked at Ask Patents Meta: meta.patents.stackexchange.com. The main site is intended for making prior art requests. Questions about the site itself or patent law should be submitted to Ask Patents Meta instead of here. :)

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My understanding is that both prior art requests AND questions about the workings of the US patent system are on-topic here. –  George White Sep 24 '13 at 16:11
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