Anticipate This!™ | Patent and Trademark Law Blog

Anticipate What?

The term “anticipation” has many meanings in common usage, including, for example:

  1. An expectation;
  2. Foreknowledge, intuition, and presentiment;
  3. The use or assignment of funds, especially from a trust fund, before they are legitimately available for use;
  4. Music.  Introduction on a weak beat of one note of a new chord before the previous chord is resolved;
  5. Medicine. Occurrence (as of a disease or symptom) before the normal or expected time; and
  6. Medicine. Mental attitude that influences a later response.

However, the term has special significance in patent prosecution as it relates to the novelty requirement of the U.S. patent laws.  Under 35 U.S.C. Section 102*, claims in a patent application are deemed “anticipated” if the subject matter of the claims was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public anywhere in the world before the effective filing date of the claimed invention.

Under U.S. case law, a claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.  Oftentimes in Office Actions from the U.S. Patent Office, claims will be rejected as being anticipated over cited art.  The patent practitioner then may submit arguments, amend the claims, and/or otherwise traverse the cited art in a Reply to overcome the rejection.

In cases where a misunderstanding of the claimed subject matter by the USPTO has occurred, traversing the rejections can be amusing . . . or, as I like to think, clarifying the invention, by reply or amendment, and effectively saying “Anticipate This!”.

*Revised March 16, 2013 due to implementation of the Leahy-Smith America Invents Act

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