What are the exceptions to 35 U.S.C. 102(a)(1) and 102(a)(2) rejections?

What are the exceptions to 35 U.S.C. 102(a)(1) and 102(a)(2) rejections?

There are several exceptions to 35 U.S.C. 102(a)(1) and 102(a)(2) rejections, which are outlined in 35 U.S.C. 102(b)(1) and 102(b)(2). These exceptions include:

• Grace period disclosures: Disclosures made by the inventor or joint inventor within one year of the effective filing date.
• Derived disclosures: Disclosures obtained from the inventor or joint inventor.
• Common ownership: Prior art under 102(a)(2) that was owned by or subject to an obligation of assignment to the same entity as the claimed invention.

MPEP 2120.01 states: “Prior art rejections under 35 U.S.C. 102(a)(1) or 102(a)(2) may use any of the exceptions available under 35 U.S.C. 102(b)(1) and 102(b)(2).” Examiners must consider these exceptions when applying 102(a)(1) or 102(a)(2) rejections, and applicants can invoke these exceptions to overcome such rejections.

To learn more:

• 35 U.S.C. 102(b)(1)
• 35 U.S.C. 102(b)(2)
• grace period
• derived disclosures
• common ownership