What is the significance of “by another” in 35 U.S.C. 102(e)?
The phrase “by another” in 35 U.S.C. 102(e) is crucial for determining prior art. According to MPEP 2136.04: “If the application names the same inventive entity as the patent, the patent does not qualify as prior art under pre-AIA 35 U.S.C. 102(e).” This means that for a patent to be considered prior art under this…
Read MoreHow does a proper priority claim affect the prior art status of international applications?
A proper priority claim can significantly affect the prior art status of international applications. The MPEP 2127 provides guidance on this: “If the international application does not have an earlier effective date under 35 U.S.C. 102(e) based on a proper priority claim to an earlier filed U.S. application, the international application is only effective as…
Read MoreWhat is the “pre-AIPA” version of 35 U.S.C. 102(e) and when does it apply?
The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000. According to the MPEP, Patents issued directly, or indirectly, from…
Read MoreWhat is the “one-way rule” for determining inventorship differences?
The “one-way rule” is a key concept in determining inventorship differences for prior art purposes. According to MPEP 2136.04: “The ‘one-way rule’ is that the inventorship of an application-publication having at least one inventor in common with the patent is different than the inventorship of the patent if the application-publication names at least one inventor…
Read MoreHow does joint inventorship affect prior art determination under 35 U.S.C. 102(e)?
Joint inventorship has significant implications for prior art determination under 35 U.S.C. 102(e). The MPEP 2136.04 provides guidance: “If the application names a subset of joint inventors A and B of a patent naming inventors A, B and C, the patent is ‘by another’ and therefore qualifies as prior art under pre-AIA 35 U.S.C. 102(e).”…
Read MoreHow does inventorship affect prior art determination under 35 U.S.C. 102(e)?
Inventorship plays a crucial role in determining prior art under 35 U.S.C. 102(e). The MPEP 2136.04 states: “If there is any difference in inventive entity, the patent may be applied in a rejection under pre-AIA 35 U.S.C. 102(e).” This means that even a slight difference in inventorship between the application and the potential prior art…
Read MoreWhat is the significance of inventorship in continuation-in-part applications?
Inventorship in continuation-in-part (CIP) applications has unique implications for prior art determination. The MPEP 2136.04 states: “If the application is a continuation-in-part of, or claims the benefit of the filing date of, a parent application naming A as the inventor, and the parent application was filed by A with a claim that was originally invented…
Read MoreHow are foreign patent applications treated as prior art under 35 U.S.C. 102(e)?
Foreign patent applications are not considered prior art under 35 U.S.C. 102(e). The MPEP states: “Note that a foreign patent application publication, including WIPO publications of international applications, may have an earlier prior art date under 35 U.S.C. 102(a) than under 35 U.S.C. 102(e).” This means that while foreign patent applications can be used as…
Read MoreWhat is the effective prior art date for WIPO publications of international applications?
The effective prior art date for WIPO publications of international applications depends on the specific subsection of 35 U.S.C. 102 being applied. According to MPEP 2127: “A WIPO publication of an international application that designates but does not originate in the U.S. is effective as prior art under 35 U.S.C. 102(e) as of the date…
Read MoreWhat is the critical reference date for a U.S. patent or patent application publication?
The critical reference date for a U.S. patent or patent application publication under 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) (pre-AIA) is the earliest effective U.S. filing date. This is stated in MPEP 2136.03: “The critical reference date of a U.S. patent or patent application publication under pre-AIA…
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