What Is Anticipation in Patent Law?

Rich Goldstein

Founder & Principal Patent Attorney

I know that there are several terms in patent law that you need to suddenly begin to know, and this can feel like a hassle. If you are planning to file your first patent, then you would find that you need to learn a good number of these terms.

Through my experiences filing various patents over the years, I’ve come across several need-to-know terms, and beyond knowing them, you need to understand where they apply. 

In this article, I aim to detail one of the most essential terms in patent law that you should know – anticipation—especially given that it is one of the most common reasons for the rejection of patent applications. The examiner in charge of the application will reject a claim on the grounds of anticipation, citing 35 U.S.C. 102(a)

So, what is anticipation in patent law, and why is it a term you must be familiar with?

What Is Anticipation in Patent Law?

In patent law, anticipation refers to the prior invention or disclosure of the claimed invention by another party or the inventor’s disclosure of the claimed invention before filing a patent application. Anticipation can occur through various means, such as publication, sale, or offer to sell. 

When an invention is anticipated, it means it is not novel or new, as it has already been disclosed or made available to the public. In other words, if someone else has knowledge of or has used the invention before a patent application is filed for it, that applicant will not be entitled to a patent. 

Inherent Disclosure

In patent law, the detailed description of an invention in a patent is crucial for distinguishing it from existing technologies. The concept of “inherency” arises when certain qualities of a technology are present but not explicitly described in the patent. 

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This issue is relevant in various patent doctrines, including anticipation. If a defendant can show that even though prior technologies didn’t explicitly mention what the patent claims to have invented, some or all of the invention was inherently present in earlier technology.

It can be used to challenge the novelty of the patent. In other words, inherent features not explicitly described in the patent can still impact its validity. 

How Does Inherent Disclosure Affect the Patent Application Process? 

During the patent application process, an examiner can use the concept of inherent disclosure to assess the novelty and nonobviousness of a claimed invention. If a particular feature is inherently disclosed in the prior art, it may contribute to rejecting the current patent application.

However, establishing inherent disclosure often requires a legal standard of proof. The involved parties must be able to demonstrate that the inherent features are necessarily present in the prior art and would be recognized by a person of ordinary skill in the relevant field. Your patent attorney would be able to help you navigate this.

Genus – Species

In patent law, “genus” refers to a broader category of a material or process used in an invention.  This category is more expansive because it has specific properties within it that, although they share common characteristics, may also vary in certain aspects. An excellent example of a genus is “acid.” 

On the other hand, “species” refers to a specific property within that wider category or genus. An excellent example of a species under the genus “acid” is “citric acid.” This practice is generally used in patent applications filed for pharmaceutical industries. 

How Does a Genus-Species Situation Affect the Patent Application Process? 

A disclosed genus in a prior art may not always anticipate a claimed species that falls within the same genus in a later application. However, a disclosed species in a prior art will always anticipate a claimed genus. Here’s an example to break it down.

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If a prior publication discloses the use of citric acid in an invention, a later, similar invention cannot claim the use of acid. This is because the species “citric acid” falls under the genus “acid,” and the latter invention could very well be ambiguously claiming the same species as the prior publication.  

Method Claims

A method claim is a type of patent claim that protects the steps or process for achieving a specific result. Method claims are typically used to protect inventions involving actions or steps to be performed in a particular order rather than a physical product. 

For instance, if an inventor develops a new method for manufacturing a chemical compound, the inventor might use a method claim to outline the specific steps involved in the manufacturing process.

Method claims must be drafted in clear, specific terms to ensure an exact understanding of the steps involved in the claimed process. And like any other type of patent claim, method claims must meet patentability requirements, including novelty, non-obviousness, and utility. Here are some types of method claims that are frequently on patents:

  • A specific process of manufacturing a product
  • A specific process of assembling a product
  • A specific process of using a product

Method Claims and Anticipation 

Method claims may contribute to anticipation in an application if a prior invention has disclosed the steps of its claimed method. To establish anticipation, each step of the claimed method must be found in a single prior art reference or a combination of references.

Apparatus Claims

Apparatus claims protect a specific product, physical or not physical. Unlike method claims, apparatus claims focus directly on the concrete aspects of an invention rather than the steps involved in creating it. 

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For example, if an inventor creates a new type of computer, said inventor can use an apparatus claim to describe the specific arrangement of its hardware and software components, such as the processor, memory, and keyboard.

Apparatus claims commonly include the following: 

  • Product claims: Claims covering a tangible product 
  • Software claims: Claims covering a software product 
  • Component claims: Claims covering the components of a product 

Apparatus Claims and Anticipation 

If a prior art discloses the invention’s structure and its components’ arrangement, the preceding publication anticipates the patent application. For this to work, however, the prior publication must disclose every property of the claimed apparatus to anticipate it.

Reference Enabling

Reference enabling is based on the “Enablement Requirement” which states that a patent specification must clearly describe how to make and use the invention, such as to enable any individual skilled in the art to make and use it without undue experimentation.

Therefore, reference enabling infers that any prior art reference used to claim anticipation during patent examination must be enabling. An enabling reference provides enough information to enable a person skilled in the relevant field to make and use the invention. 

Reference Enabling and Anticipation

To anticipate a claimed invention, a prior publication reference must disclose the properties and process of the invention and enable a person skilled in the art to create and use the invention based on that disclosure.

This implies that if the prior art reference is not enabling, it cannot claim to anticipate the current patent application. This concept, alongside the others, is something an excellent patent lawyer understands and can navigate.

Single Reference

The term “single reference” refers to a singular prior art used to challenge a claimed invention’s novelty during the application process. A single reference can be any document, publication, patent, or other publicly available source that exists before the filing date of the patent application. 

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This reference serves as evidence that the invention was already known or disclosed in the prior invention. Unlike a combination of references, which involves the use of multiple documents to disclose all the elements of the claimed invention collectively, single references are one of the most common scenarios in anticipation.

Single Reference and Anticipation 

Similar to what has been discussed above, for a single prior art reference to anticipate a claimed invention, it must disclose each element of the invention and also provide enough information for a person skilled in the art to create and use the claimed invention. 

For anticipation based on a single reference, the disclosure in that reference must be direct and unambiguous. It should also match the claimed invention precisely. Any variation in the disclosure may weaken the anticipation argument.

Expert Testimony

Expert testimony refers to the testimony given by individuals who are established experts in a field relevant to the claimed invention. This testimony often reveals specialized knowledge and insights that can be helpful during patent disputes to help the patent examiner understand the technical aspects of the invention. 

Expert witnesses are typically qualified based on their education and experience. They offer their opinions on issues related to patent validity, anticipation, infringement, or other matters. Note, however, that the admissibility of expert testimony is still subject to certain legal rules and standards. 

Expert Testimony and Anticipation

During an anticipation argument, an expert witness may be called to help the examiner understand the technical scope of the prior art and whether it discloses all the features of the claimed invention.

If the expert testimony holds that the prior invention discloses the features of the claimed invention, then the prior invention can claim to anticipate the invention. Note that each party may call their own expert witnesses to support or dispute claims of anticipation.

Does Anticipation Require Written Description Support?

The written description of a patent application, also known as a Detailed Description, is a section that explains the invention in full, clear, concise, and exact terms. It is the most important part of any patent specification and focuses on explaining the structure, processes, and/or compositions of the invention in a way that a layman will understand. 

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Anticipation claims do not always inherently require the support of the written description. For instance, in cases that involve inherent disclosures. However, a well-detailed written description can increase the overall strength and validity of a patent.

A strong Detailed Description in the patent specification of a prior art can serve as evidence supporting the enablement of the claimed invention. It may, therefore, serve as proof that the prior art anticipated the claimed invention.

Patent Board Says Anticipation Can’t Involve “Picking and Choosing”

The Patent Trial and Appeal Board (PTAB) stated that anticipation can’t involve “picking and choosing” during a patent application rejection case. This statement simply means that in determining if a patent claim is anticipated by a prior invention, you can’t selectively combine different parts of multiple references to show anticipation. 

Anticipation requires that all elements of an invention are found in a single prior reference or a combination of references. The phrase “picking and choosing” suggests that you can’t simply cherry-pick different elements from different references to argue anticipation. Instead, you need a clear and complete disclosure of the entire invention in the prior art.

For example, if you have a new invention with features A, B, and C, anticipation would mean that all of these features exist together in a single document or a combination of documents that existed before you filed an application for your invention. Therefore, picking out A from one reference, B from another, and C from another will not work. 

Related Questions 

What Is Prior Publication or Anticipation in Patent?

Prior publication, also known as anticipation in patent law, has to do with the public disclosure of a claimed invention before a patent application is filed. If an invention is made available to the public in any form before the filing date of a patent application, this prior publication can file an anticipation claim against it. 

What Is the Doctrine of Anticipation?

The doctrine of anticipation refers to the prior disclosure of a claimed invention by another party or the inventor’s own disclosure of the invention through various means, such as publication, sale, or offer to sell, before filing a patent application. This doctrine states that the invention is lacking in novelty if it is anticipated by a prior art. 

What Is an Act of Anticipation?

An act of anticipation in patent law occurs when the details of an invention are publicly disclosed before the filing date of a patent application. The claimed invention is anticipated by the prior art if the disclosed information or the prior art covers the features of the claimed invention in an enabling manner. 

Conclusion

Anticipation means that a claimed invention has already been publicly disclosed before the filing of a patent application for it. This means the invention is not new and cannot be granted a patent. However, to establish anticipation, there must be an unambiguous disclosure of the claimed features in a single prior reference or a combination of references.

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