35 U.S.C. § 104 — [Repealed.] (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 35 U.S.C. § 104, including 35 rules 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.

Summary

35 USC 104 is a repealed section of pre-America Invents Act patent law that was historically used to define geographical limitations for invention knowledge and use within the United States.

What this section covers

Explained the geographical limitation of prior art knowledge under pre-AIA patent law.
Clarified the scope of domestic invention disclosure requirements before the America Invents Act.

Key obligations

Required that knowledge or use relied upon in a patent rejection must be specifically from within the United States.
Recognized territorial constraints on prior art evidence during pre-AIA patent examination.

Practice notes

Highlighted the critical distinction between pre-AIA and AIA patent disclosure standards.
Represents a historical patent law provision that was specific to pre-AIA territorial requirements and is no longer in use.

Complaint Copy Must Be Filed With PTAB and USPTO Office of the Solicitor Within Five Business DaysMPEP 1216
Complaint Must Be Filed with PTAB and Office of the Solicitor Within Five Business DaysMPEP 1216Required
Requirement for Complaint Filing with PTAB and USPTOMPEP 1216Permitted
Pre-AIA 102(a) Knowledge Must Be In U.S.MPEP 2132Required
Prior Knowledge or Use Outside the U.S. Cannot Invalidate Pre-AIA PatentabilityMPEP 2132Prohibited
In This Country Means United States Only for Pre-AIA 102(a) RejectionsMPEP 2132
Invention Must Be Made in This CountryMPEP 2138.02
Requirement for Conception, Reduction to Practice, and Diligence in This CountryMPEP 2138.02Required
Invention Date Not Establishable from Foreign Use Except NAFTA/WTOMPEP 2301.01Prohibited
Date of Invention Not Establishable from Foreign Use Outside NAFTA/WTO CountriesMPEP 2301.01Prohibited
Rights for Inventions Made While Serving OverseasMPEP 2301.01Prohibited
Rights for Inventions Made by Civil or Military PersonnelMPEP 2301.01Prohibited
Definitions of NAFTA Country and WTO Member CountryMPEP 2301.01
Definition of WTO Member CountryMPEP 2301.01
Date of Completion Requirement for NAFTA and WTO CountriesMPEP 715Permitted
Date of Completion Requirement for NAFTA and WTO CountriesMPEP 715Prohibited
Requirement for Prior Invention DateMPEP 718Prohibited

Complaint Must Be Filed with PTAB and Office of the Solicitor Within Five Business DaysMPEP 1216Required
Pre-AIA 102(a) Knowledge Must Be In U.S.MPEP 2132Required
Requirement for Conception, Reduction to Practice, and Diligence in This CountryMPEP 2138.02Required
Requirement for Common Ownership at Time of Later InventionMPEP 2146.02Required
Invention Must Be Ready for Patenting Before Critical DateMPEP 2146.02Required
Requirement for Affidavit/Declaration on Acts Relied UponMPEP 715.07(c)Required
Inventor Named Must Have Invented Before Reference DateMPEP 718Required

Party May Establish Invention Date in Interference ProceedingMPEP 2138.02Permitted
Establishment of Invention Date in NAFTA/WTO CountriesMPEP 2138.02Permitted
Earlier Invention Not Disqualified as Prior Art If No Common Ownership at Later Invention’s CreationMPEP 2146.02
Invention Made When Conception Is CompleteMPEP 2146.02
Common Ownership Irrespective of Invention LocationMPEP 2146.02Permitted
Continued Application of Pre-AIA 104 for Interference ProceedingsMPEP 2146.02
Foreign Filing Date Continues for Interference Purposes Under Pre-AIA 35 U.S.C. 102 and 104MPEP 2146.02
Effective Date for Proving Inventive Activity in WTO Member Countries After 1996MPEP 715
Inventor Publication Can Overcome Pre-AIA 102 RejectionMPEP 715.01(c)Permitted
Publication by Inventor Can Overcome Pre-AIA RejectionMPEP 715.01(c)Permitted
Inventor Publication Can Overcome Prior Art RejectionMPEP 715.01(c)
Affidavit Must Allege Acts Carried Out in This Country or NAFTA/WTO Member CountryMPEP 715.07(c)
Inventor's Oath/Declaration Required for Nonstatutory Double PatentingMPEP 718
Oath or Declaration Requirement for Prior InventionMPEP 718Prohibited

MPEP Section	Rules
MPEP § 1216	Complaint Copy Must Be Filed With PTAB and USPTO Office of the Solicitor Within Five Business DaysMPEP 1216 Complaint Must Be Filed with PTAB and Office of the Solicitor Within Five Business DaysMPEP 1216Required Requirement for Complaint Filing with PTAB and USPTOMPEP 1216Permitted
MPEP § 2132	Pre-AIA 102(a) Knowledge Must Be In U.S.MPEP 2132Required Prior Knowledge or Use Outside the U.S. Cannot Invalidate Pre-AIA PatentabilityMPEP 2132Prohibited In This Country Means United States Only for Pre-AIA 102(a) RejectionsMPEP 2132
MPEP § 2138.02	Invention Must Be Made in This CountryMPEP 2138.02 Requirement for Conception, Reduction to Practice, and Diligence in This CountryMPEP 2138.02Required Party May Establish Invention Date in Interference ProceedingMPEP 2138.02Permitted Establishment of Invention Date in NAFTA/WTO CountriesMPEP 2138.02Permitted
MPEP § 2146.02	Requirement for Common Ownership at Time of Later InventionMPEP 2146.02Required Earlier Invention Not Disqualified as Prior Art If No Common Ownership at Later Invention’s CreationMPEP 2146.02 Invention Made When Conception Is CompleteMPEP 2146.02 Invention Must Be Ready for Patenting Before Critical DateMPEP 2146.02Required Common Ownership Irrespective of Invention LocationMPEP 2146.02Permitted Continued Application of Pre-AIA 104 for Interference ProceedingsMPEP 2146.02 Foreign Filing Date Continues for Interference Purposes Under Pre-AIA 35 U.S.C. 102 and 104MPEP 2146.02
MPEP § 2301.01	Invention Date Not Establishable from Foreign Use Except NAFTA/WTOMPEP 2301.01Prohibited Date of Invention Not Establishable from Foreign Use Outside NAFTA/WTO CountriesMPEP 2301.01Prohibited Rights for Inventions Made While Serving OverseasMPEP 2301.01Prohibited Rights for Inventions Made by Civil or Military PersonnelMPEP 2301.01Prohibited Definitions of NAFTA Country and WTO Member CountryMPEP 2301.01 Definition of WTO Member CountryMPEP 2301.01
MPEP § 715	Date of Completion Requirement for NAFTA and WTO CountriesMPEP 715Permitted Date of Completion Requirement for NAFTA and WTO CountriesMPEP 715Prohibited Effective Date for Proving Inventive Activity in WTO Member Countries After 1996MPEP 715
MPEP § 715.01(c)	Inventor Publication Can Overcome Pre-AIA 102 RejectionMPEP 715.01(c)Permitted Publication by Inventor Can Overcome Pre-AIA RejectionMPEP 715.01(c)Permitted Inventor Publication Can Overcome Prior Art RejectionMPEP 715.01(c)
MPEP § 715.07(c)	Requirement for Affidavit/Declaration on Acts Relied UponMPEP 715.07(c)Required Affidavit Must Allege Acts Carried Out in This Country or NAFTA/WTO Member CountryMPEP 715.07(c)
MPEP § 718	Inventor's Oath/Declaration Required for Nonstatutory Double PatentingMPEP 718 Inventor Named Must Have Invented Before Reference DateMPEP 718Required Oath or Declaration Requirement for Prior InventionMPEP 718Prohibited Requirement for Prior Invention DateMPEP 718Prohibited

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

35 U.S.C. § 104 — [Repealed.] (MPEP Coverage Index) – BlueIron IP

35 U.S.C. § 104 [Repealed.]

Summary

Official MPEP § 104 — [Repealed.]

35 U.S.C. 104 [Repealed.]

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions