What types of U.S. patent documents are considered prior art under AIA 35 U.S.C. 102(a)(2)?

Under AIA 35 U.S.C. 102(a)(2), three types of U.S. patent documents are considered prior art as of their effective filing date if they name another inventor: U.S. patents U.S. patent application publications World Intellectual Property Organization (WIPO) publications of international applications that designate the United States As stated in the MPEP: “AIA 35 U.S.C. 102(a)(2)…

Read More

What is a provisional rejection under 35 U.S.C. 102(a)(2)?

A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d): “If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending…

Read More

How does a prior art reference’s content affect its use in rejections under 35 U.S.C. 102(a)(2)?

How does a prior art reference’s content affect its use in rejections under 35 U.S.C. 102(a)(2)? The content of a prior art reference can significantly impact its use in rejections under 35 U.S.C. 102(a)(2). According to MPEP 2136.02: “Subject matter that is prior art under 35 U.S.C. 102(a)(2) based on an earlier effective filing date…

Read More

How does joint inventorship affect the “names another inventor” requirement?

In cases of joint inventorship, the “names another inventor” requirement under AIA 35 U.S.C. 102(a)(2) is satisfied even if only one joint inventor is different between the prior art document and the application under examination. MPEP 2154.01(c) clarifies: “Thus, in the case of joint inventors, only one joint inventor needs to be different for the…

Read More

How should examiners handle claims in a petitioner’s application during a derivation proceeding?

According to MPEP 2311, examiners should handle claims in a petitioner’s application during a derivation proceeding as follows: “The claims in petitioner’s application that are patentably indistinct from respondent’s application or patent should be subject to a rejection under 35 U.S.C. 102(a)(2) which should be maintained until jurisdiction is transferred to the Board to conduct…

Read More