MPEP § 2133.03(e)(3) — “Completeness” of the Invention (Annotated Rules)
§2133.03(e)(3) “Completeness” of the Invention
This page consolidates and annotates all enforceable requirements under MPEP § 2133.03(e)(3), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
“Completeness” of the Invention
This section addresses “Completeness” of the Invention. Primary authority: 35 U.S.C. 100, 35 U.S.C. 102, and 35 U.S.C. 102(b). Contains: 1 guidance statement, 1 permission, and 1 other statement.
Key Rules
On Sale Under AIA (MPEP 2152.02(d))
[Editor Note: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
Pre-AIA 102(b) – Statutory Bar (MPEP 2133)
Where a prototype of an invention has been disposed of by an inventor before the critical date, inquiry by the examiner should focus upon the intent of the inventor and the reasonableness of the disposal under all circumstances. The fact that an otherwise reasonable disposal of a prototype involves incidental income is not necessarily fatal. In re Dybel, 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA 1975). However, if a prototype is considered “complete” by an inventor and all experimentation on the underlying invention has ceased, unrestricted disposal of the prototype constitutes a bar under pre-AIA 35 U.S.C. 102(b). In re Blaisdell, 242 F.2d 779, 113 USPQ 289 (CCPA 1957); contra, Watson v. Allen, 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).
Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159)
Where a prototype of an invention has been disposed of by an inventor before the critical date, inquiry by the examiner should focus upon the intent of the inventor and the reasonableness of the disposal under all circumstances. The fact that an otherwise reasonable disposal of a prototype involves incidental income is not necessarily fatal. In re Dybel, 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA 1975). However, if a prototype is considered “complete” by an inventor and all experimentation on the underlying invention has ceased, unrestricted disposal of the prototype constitutes a bar under pre-AIA 35 U.S.C. 102(b). In re Blaisdell, 242 F.2d 779, 113 USPQ 289 (CCPA 1957); contra, Watson v. Allen, 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).
Citations
| Primary topic | Citation |
|---|---|
| On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 100 |
| On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 102 |
| Pre-AIA 102(b) – Statutory Bar (MPEP 2133) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 102(b) |
| – | MPEP § 2133.03(c) |
| On Sale Under AIA (MPEP 2152.02(d)) | MPEP § 2150 |
| On Sale Under AIA (MPEP 2152.02(d)) | MPEP § 2152.02(c) |
| On Sale Under AIA (MPEP 2152.02(d)) | MPEP § 2159 |
| Pre-AIA 102(b) – Statutory Bar (MPEP 2133) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | In re Blaisdell, 242 F.2d 779, 113 USPQ 289 (CCPA 1957) |
| – | In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979) |
| – | Interroyal Corp. v. Simmons Co., 204 USPQ 562, 566 (S.D.N.Y. 1979) |
| – | Skil Corp. v. Rockwell Manufacturing Co., 358 F. Supp. 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2133.03(e)(3) — “Completeness” of the Invention
Source: USPTO2133.03(e)(3) “Completeness” of the Invention [R-07.2022]
[Editor Note: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
I. EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO PRACTICEExperimental use “means perfecting or completing an invention to the point of determining that it will work for its intended purpose.” Therefore, experimental use “ends with an actual reduction to practice.” RCA Corp.v.Data Gen. Corp., 887 F.2d 1056, 1061, 12 USPQ2d 1449, 1453 (Fed. Cir. 1989). If the examiner concludes from the evidence of record that the inventor was satisfied that an invention was in fact “complete,” awaiting approval by the inventor from an organization such as Underwriters’ Laboratories will not normally overcome this conclusion. Interroyal Corp. v. Simmons Co., 204 USPQ 562, 566 (S.D.N.Y. 1979); Skil Corp. v. Rockwell Manufacturing Co., 358 F. Supp. 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973), aff’d. in part, rev’d in part sub nom.Skil Corp. v. Lucerne Products Inc., 503 F.2d 745, 183 USPQ 396, 399 (7th Cir. 1974), cert. denied, 420 U.S. 974, 185 USPQ 65 (1975). See MPEP § 2133.03(c) for more information of what constitutes a “complete” invention.
The fact that alleged experimental activity does not lead to specific modifications or refinements of an invention is evidence, although not conclusive evidence, that such activity is not within the realm permitted by the statute. This is especially the case where the evidence of record clearly demonstrates to the examiner that an invention was considered “complete” by an inventor at the time of the activity. Nevertheless, any modifications or refinements which did result from such experimental activity must at least be a feature of the claimed invention to be of any probative value. In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
II. DISPOSAL OF PROTOTYPESWhere a prototype of an invention has been disposed of by an inventor before the critical date, inquiry by the examiner should focus upon the intent of the inventor and the reasonableness of the disposal under all circumstances. The fact that an otherwise reasonable disposal of a prototype involves incidental income is not necessarily fatal. In re Dybel, 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA 1975). However, if a prototype is considered “complete” by an inventor and all experimentation on the underlying invention has ceased, unrestricted disposal of the prototype constitutes a bar under pre-AIA 35 U.S.C. 102(b). In re Blaisdell, 242 F.2d 779, 113 USPQ 289 (CCPA 1957); contra,Watson v.Allen, 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).