MPEP § 717 — Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) (Annotated Rules)
§717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)
This page consolidates and annotates all enforceable requirements under MPEP § 717, 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.
Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)
This section addresses Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2). Primary authority: 35 U.S.C. 102(b)(1), 35 U.S.C. 102(a)(1), and 35 U.S.C. 102(b)(2)(A). Contains: 3 prohibitions and 1 other statement.
Key Rules
Determining Whether Application Is AIA or Pre-AIA
35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure made no earlier than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b). See MPEP § 717.01 et seq. for more information on declarations filed under 37 CFR 1.130.
Additionally, 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior patents and published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102) or nonobviousness (35 U.S.C. 103). See MPEP § 717.02 et seq. for more information on the prior art exception under 35 U.S.C. 102(b)(2)(C).
35 U.S.C. 102 – Novelty / Prior Art
For more information on the provisions of 35 U.S.C. 102 in general, see MPEP § 2150 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(1), see MPEP § 2153 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(2), see MPEP § 2154.02 et seq.
For more information on the provisions of 35 U.S.C. 102 in general, see MPEP § 2150 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(1), see MPEP § 2153 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(2), see MPEP § 2154.02 et seq.
For more information on the provisions of 35 U.S.C. 102 in general, see MPEP § 2150 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(1), see MPEP § 2153 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(2), see MPEP § 2154.02 et seq.
AIA vs Pre-AIA Practice
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
The AIA does not define the term "disclosure," and 35 U.S.C. 102(a) does not use the term "disclosure." 35 U.S.C. 102(b)(1) and 102(b)(2), however, each state conditions under which a "disclosure" that otherwise falls within 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C. 102(a)(1) or 102(a)(2). Thus, the Office is treating the term "disclosure" as a generic expression intended to encompass the documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).
Antedating Reference – Pre-AIA (MPEP 2136.05)
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
Grace Period – Own Disclosure (102(b)(1)(A))
35 U.S.C. 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if: (1) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Grace Period – Intervening Disclosure (102(b)(1)(B))
Additionally, 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior patents and published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102) or nonobviousness (35 U.S.C. 103). See MPEP § 717.02 et seq. for more information on the prior art exception under 35 U.S.C. 102(b)(2)(C).
On Sale Under AIA (MPEP 2152.02(d))
The AIA does not define the term "disclosure," and 35 U.S.C. 102(a) does not use the term "disclosure." 35 U.S.C. 102(b)(1) and 102(b)(2), however, each state conditions under which a "disclosure" that otherwise falls within 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C. 102(a)(1) or 102(a)(2). Thus, the Office is treating the term "disclosure" as a generic expression intended to encompass the documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).
Citations
| Primary topic | Citation |
|---|---|
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) | 35 U.S.C. § 100 |
| 35 U.S.C. 102 – Novelty / Prior Art AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Determining Whether Application Is AIA or Pre-AIA Grace Period – Intervening Disclosure (102(b)(1)(B)) | 35 U.S.C. § 102 |
| AIA vs Pre-AIA Practice Determining Whether Application Is AIA or Pre-AIA On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 102(a) |
| AIA vs Pre-AIA Practice Grace Period – Own Disclosure (102(b)(1)(A)) On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 102(a)(1) |
| Determining Whether Application Is AIA or Pre-AIA Grace Period – Intervening Disclosure (102(b)(1)(B)) | 35 U.S.C. § 102(a)(2) |
| Determining Whether Application Is AIA or Pre-AIA | 35 U.S.C. § 102(b) |
| 35 U.S.C. 102 – Novelty / Prior Art AIA vs Pre-AIA Practice Grace Period – Own Disclosure (102(b)(1)(A)) On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 102(b)(1) |
| 35 U.S.C. 102 – Novelty / Prior Art | 35 U.S.C. § 102(b)(2) |
| Determining Whether Application Is AIA or Pre-AIA | 35 U.S.C. § 102(b)(2)(A) |
| Determining Whether Application Is AIA or Pre-AIA Grace Period – Intervening Disclosure (102(b)(1)(B)) | 35 U.S.C. § 102(b)(2)(C) |
| Determining Whether Application Is AIA or Pre-AIA Grace Period – Intervening Disclosure (102(b)(1)(B)) | 35 U.S.C. § 102(e) |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) Determining Whether Application Is AIA or Pre-AIA Grace Period – Intervening Disclosure (102(b)(1)(B)) | 35 U.S.C. § 103 |
| Determining Whether Application Is AIA or Pre-AIA Grace Period – Intervening Disclosure (102(b)(1)(B)) | 35 U.S.C. § 103(c) |
| Determining Whether Application Is AIA or Pre-AIA | 37 CFR § 1.130 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) | 37 CFR § 1.131(a) |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) | 37 CFR § 1.131(c) |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) | 37 CFR § 1.132 |
| 35 U.S.C. 102 – Novelty / Prior Art | MPEP § 2150 |
| 35 U.S.C. 102 – Novelty / Prior Art | MPEP § 2153 |
| 35 U.S.C. 102 – Novelty / Prior Art | MPEP § 2154.02 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) | MPEP § 2159 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) | MPEP § 715 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) | MPEP § 716.10 |
| Determining Whether Application Is AIA or Pre-AIA | MPEP § 717.01 |
| Determining Whether Application Is AIA or Pre-AIA Grace Period – Intervening Disclosure (102(b)(1)(B)) | MPEP § 717.02 |
| AIA vs Pre-AIA Practice Antedating Reference – Pre-AIA (MPEP 2136.05) | MPEP § 718 |
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 § 717 — Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)
Source: USPTO717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) [R-07.2022]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
35 U.S.C. 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if: (1) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure made no earlier than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b). See MPEP § 717.01et seq. for more information on declarations filed under 37 CFR 1.130.
Additionally, 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior patents and published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102) or nonobviousness (35 U.S.C. 103). See MPEP § 717.02et seq. for more information on the prior art exception under 35 U.S.C. 102(b)(2)(C).
The AIA does not define the term “disclosure,” and 35 U.S.C. 102(a) does not use the term “disclosure.” 35 U.S.C. 102(b)(1) and 102(b)(2), however, each state conditions under which a “disclosure” that otherwise falls within 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C. 102(a)(1) or 102(a)(2). Thus, the Office is treating the term “disclosure” as a generic expression intended to encompass the documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).
For more information on the provisions of 35 U.S.C. 102 in general, see MPEP § 2150et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(1), see MPEP § 2153et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(2), see MPEP § 2154.02et seq.