A disclosure in a potential prior art reference within the one-year grace period is excepted as prior art under 35 U.S.C. 102(b)(1)(A) if the disclosure was the inventor’s or at least one joint inventor’s own work that was publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) one year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. See MPEP § 2153.01(a).

A disclosure in a potential prior art reference within the one-year grace period is excepted as prior art under 35 U.S.C. 102(b)(1)(A) if the disclosure was the inventor’s or at least one joint inventor’s own work that was publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) one year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. See MPEP § 2153.01(a).

Disclosures in potential prior art references within the one-year grace period are also excepted as prior art under 35 U.S.C. 102(b)(1)(B) if the reference discloses subject matter that was previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Specifically, 35 U.S.C. 102(b)(1)(B) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) (patent, printed publication, public use, sale, or other means of public availability) is excepted as prior art if: (1) the disclosure was made one year or less before the effective filing date of the claimed invention; and (2) the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. See MPEP §§ 2153.02 and 717.01(b)(2).

Disclosures in potential prior art references within the one-year grace period are also excepted as prior art under 35 U.S.C. 102(b)(1)(B) if the reference discloses subject matter that was previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Specifically, 35 U.S.C. 102(b)(1)(B) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) (patent, printed publication, public use, sale, or other means of public availability) is excepted as prior art if: (1) the disclosure was made one year or less before the effective filing date of the claimed invention; and (2) the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. See MPEP §§ 2153.02 and 717.01(b)(2).

Disclosures in potential prior art references are not prior art under 35 U.S.C. 102(a)(2) if one of the three exception provisions of 35 U.S.C. 102(b)(2) applies. 35 U.S.C. 102(b)(2)(A) limits the use of an inventor’s or at least one joint inventor’s own work as prior art when the inventor’s or at least one joint inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(B) excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in that both concern common ownership, and both offer an avenue by which an applicant may avoid certain disclosures that are commonly owned or deemed commonly owned. However, there are significant differences between 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c). See MPEP § 2154.02(b).

First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(1). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(1) apply.

First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(1). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(1) apply.

First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(2). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(2) apply.

First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(2). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(2) apply.

Patents claiming or describing the claimed inventions, descriptions of the claimed invention in a printed publication, public use of the claimed invention, placing the claimed invention on sale, and otherwise making the claimed invention available to the public qualify as prior art under 35 U.S.C. 102(a)(1) if the reference predates the effective filing date of the claim. The sale or use of the invention need not occur in the United States to qualify. See MPEP § 2152.

Patents claiming or describing the claimed inventions, descriptions of the claimed invention in a printed publication, public use of the claimed invention, placing the claimed invention on sale, and otherwise making the claimed invention available to the public qualify as prior art under 35 U.S.C. 102(a)(1) if the reference predates the effective filing date of the claim. The sale or use of the invention need not occur in the United States to qualify. See MPEP § 2152.

U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications designating the United States that are published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention, unless an exception under 35 U.S.C. 102(b)(2) applies. Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, such that the reference does not qualify as 102(a)(1) prior art, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim. MPEP § 2152.01 discusses the “effective filing date” of a claimed invention. 35 U.S.C. 102(d) sets forth the criteria to determine when subject matter described in a U.S. patent, U.S. patent application publication, or WIPO published application was “effectively filed” for purposes of 35 U.S.C. 102(a)(2). See MPEP § 2154.

U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications designating the United States that are published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention, unless an exception under 35 U.S.C. 102(b)(2) applies. Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, such that the reference does not qualify as 102(a)(1) prior art, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim. MPEP § 2152.01 discusses the “effective filing date” of a claimed invention. 35 U.S.C. 102(d) sets forth the criteria to determine when subject matter described in a U.S. patent, U.S. patent application publication, or WIPO published application was “effectively filed” for purposes of 35 U.S.C. 102(a)(2). See MPEP § 2154.

[Editor Note: This MPEP section is only 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 § 2131 – MPEP § 2138 and MPEP § 2139.02 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications designating the United States that are published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention, unless an exception under 35 U.S.C. 102(b)(2) applies. Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, such that the reference does not qualify as 102(a)(1) prior art, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim. MPEP § 2152.01 discusses the “effective filing date” of a claimed invention. 35 U.S.C. 102(d) sets forth the criteria to determine when subject matter described in a U.S. patent, U.S. patent application publication, or WIPO published application was “effectively filed” for purposes of 35 U.S.C. 102(a)(2). See MPEP § 2154.

U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications designating the United States that are published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention, unless an exception under 35 U.S.C. 102(b)(2) applies. Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, such that the reference does not qualify as 102(a)(1) prior art, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim. MPEP § 2152.01 discusses the “effective filing date” of a claimed invention. 35 U.S.C. 102(d) sets forth the criteria to determine when subject matter described in a U.S. patent, U.S. patent application publication, or WIPO published application was “effectively filed” for purposes of 35 U.S.C. 102(a)(2). See MPEP § 2154.

Disclosures in potential prior art references are not prior art under 35 U.S.C. 102(a)(2) if one of the three exception provisions of 35 U.S.C. 102(b)(2) applies. 35 U.S.C. 102(b)(2)(A) limits the use of an inventor’s or at least one joint inventor’s own work as prior art when the inventor’s or at least one joint inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(B) excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in that both concern common ownership, and both offer an avenue by which an applicant may avoid certain disclosures that are commonly owned or deemed commonly owned. However, there are significant differences between 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c). See MPEP § 2154.02(b).

Disclosures in potential prior art references are not prior art under 35 U.S.C. 102(a)(2) if one of the three exception provisions of 35 U.S.C. 102(b)(2) applies. 35 U.S.C. 102(b)(2)(A) limits the use of an inventor’s or at least one joint inventor’s own work as prior art when the inventor’s or at least one joint inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(B) excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in that both concern common ownership, and both offer an avenue by which an applicant may avoid certain disclosures that are commonly owned or deemed commonly owned. However, there are significant differences between 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c). See MPEP § 2154.02(b).

Disclosures in potential prior art references are not prior art under 35 U.S.C. 102(a)(2) if one of the three exception provisions of 35 U.S.C. 102(b)(2) applies. 35 U.S.C. 102(b)(2)(A) limits the use of an inventor’s or at least one joint inventor’s own work as prior art when the inventor’s or at least one joint inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(B) excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. 35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in that both concern common ownership, and both offer an avenue by which an applicant may avoid certain disclosures that are commonly owned or deemed commonly owned. However, there are significant differences between 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c). See MPEP § 2154.02(b).