MPEP § 2301.04 — Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013 (Annotated Rules)
§2301.04 Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013
This page consolidates and annotates all enforceable requirements under MPEP § 2301.04, 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.
Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013
This section addresses Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013. Primary authority: 35 U.S.C. 102, 35 U.S.C. 102(g), and 35 U.S.C. 3(n)(2). Contains: 1 guidance statement, 2 permissions, and 1 other statement.
Key Rules
AIA vs Pre-AIA Practice
Applications subject to AIA 35 U.S.C. 102 (see MPEP § 2159) may also be subject to an interference.
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it: (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP §§ 2138 and 2159.03.
Where an application not subject to pre-AIA 35 U.S.C. 102(g) interferes with a patent subject to pre-AIA 35 U.S.C. 102(g), the examiner should consult with an Interference Practice Specialist.
AIA Effective Dates
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it: (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP §§ 2138 and 2159.03.
Thus, if an application contains, or contained at any time, a claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, a claim having an effective filing date that is on or after March 16, 2013, each claim may still be subject to an interference in accordance with pre-AIA 35 U.S.C. 102(g) while the application is also subject to AIA 35 U.S.C. 102 and 103. Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293.
Thus, if an application contains, or contained at any time, a claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, a claim having an effective filing date that is on or after March 16, 2013, each claim may still be subject to an interference in accordance with pre-AIA 35 U.S.C. 102(g) while the application is also subject to AIA 35 U.S.C. 102 and 103. Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293.
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates AIA vs Pre-AIA Practice | 35 U.S.C. § 100(i) |
| AIA Effective Dates AIA vs Pre-AIA Practice | 35 U.S.C. § 102 |
| AIA Effective Dates AIA vs Pre-AIA Practice | 35 U.S.C. § 102(g) |
| AIA Effective Dates | 37 CFR § 3(n)(2) |
| AIA Effective Dates AIA vs Pre-AIA Practice | MPEP § 2138 |
| AIA vs Pre-AIA Practice | MPEP § 2159 |
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 § 2301.04 — Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013
Source: USPTO2301.04 Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013 [R-01.2024]
Applications subject to AIA 35 U.S.C. 102 (see MPEP § 2159) may also be subject to an interference.
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it: (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP §§ 2138 and 2159.03.
Thus, if an application contains, or contained at any time, a claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, a claim having an effective filing date that is on or after March 16, 2013, each claim may still be subject to an interference in accordance with pre-AIA 35 U.S.C. 102(g) while the application is also subject to AIA 35 U.S.C. 102 and 103. Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293.
Where an application not subject to pre-AIA 35 U.S.C. 102(g) interferes with a patent subject to pre-AIA 35 U.S.C. 102(g), the examiner should consult with an Interference Practice Specialist.