What happens if an applicant submits a statement to invoke the AIA 35 U.S.C. 102(b)(2)(C) exception?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs 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. When an applicant submits a statement to invoke the AIA 35 U.S.C. 102(b)(2)(C) exception , the examiner must carefully consider the statement and its implications. The MPEP provides specific guidance: ‘If the applicant disqualifies the subject matter relied upon by the examiner in accordance with AIA 35 U.S.C. 102(b)(2)(C) and the procedures in MPEP § 717.02(b), the examiner should treat the application as if the disqualified prior art was not in the application.’ This means that if the statement is properly made and meets all requirements: The examiner must disregard the disqualified prior art for the purposes of AIA 35 U.S.C. 102(a)(2) rejections The examination will proceed as if that prior art did not exist in the context of novelty and non-obviousness determinations The examiner may need to reconsider any previously made rejections based on the now-disqualified prior art It’s important to note that the exception only applies to AIA 35 U.S.C. 102(a)(2) prior art and does not affect other bases for rejection. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Exceptions to Prior Art under 35 U.S.C. 102(b)(2) MPEP 717 Exceptions to Prior Art Under 35 U.S.C. 102(b)(1) MPEP 717 Exceptions to Prior Art under 35 U.S.C. 102(b)(1) and (b)(2) MPEP 717 Co-Worker Patents Not Prior Art Under AIA MPEP 717 Disclosure by Inventor Not Prior Art MPEP 717 Prohibited Affidavit for Disclosure Not Prior Art MPEP 717 Disclosure Not Prior Art if Same Owner MPEP 717 Prohibited Requirement for AIA Practice MPEP 717 Affidavits Required for Pre-AIA Applications MPEP 717 Disclosure by Inventor Within One Year Not Prior Art MPEP 717 Prohibited Other Related FAQs 5 FAQs Collapse Can a 37 CF...