How does an examiner determine if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate?

An examiner determines if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate by discovering a foreign patent or inventor’s certificate that meets the statutory requirements. The MPEP states:

“If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory bar.“

The examiner should undertake a search for such foreign patents only if there’s a reasonable possibility that one has been granted before the U.S. effective filing date. This typically occurs when there’s a significant time gap between foreign and U.S. filings.

For further clarification on the requirements, examiners are directed to MPEP § 2135.01.

To learn more:

• Pre-AIA 35 U.S.C. 102(d)
• patent examination
• foreign patents
• statutory bar
• patent rejection