Can disclosure without claiming in a prior issued patent lead to abandonment under pre-AIA 35 U.S.C. 102(c)?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Disclosure without claiming in a prior issued patent does not automatically lead to abandonment under pre-AIA 35 U.S.C. 102(c). According to MPEP 2134:

“Any inference of abandonment (i.e., intent to dedicate to the public) of subject matter disclosed but not claimed in a previously issued patent is rebuttable by an application filed at any time before a statutory bar arises.”

This means that if an inventor discloses an invention in a patent but doesn’t claim it, they can still file a new application to claim that subject matter, as long as they do so before any statutory bars (like public use or sale) come into effect. The MPEP further states:

“Accordingly, a rejection of a claim of a patent application under pre-AIA 35 U.S.C. 102(c) predicated solely on the issuance of a patent which discloses the subject matter of the claim in the application without claiming it would be improper.”

This guideline protects inventors from unintentionally abandoning aspects of their invention that were disclosed but not claimed in earlier patents.