Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Described In A Printed Publication (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
To learn more:
MPEP 2100 – Patentability (8)
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
To learn more:
AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states:
“AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.“
This means that if a U.S. patent document claims priority to a foreign application, and that foreign application describes the subject matter in question, the effective filing date for prior art purposes can be the filing date of the foreign application. This change potentially creates more prior art by allowing earlier effective filing dates based on foreign priority claims.
To learn more:
The AIA 35 U.S.C. 102(b)(2)(A) exception applies broadly to U.S. patent documents. According to the MPEP:
The 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception.
This means that the exception can potentially be applied to any U.S. patent, U.S. patent application publication, or WIPO published application, regardless of when it was published or filed. The key factor is whether the subject matter was obtained directly or indirectly from the inventor or joint inventor.
To learn more:
What is the difference between pre-AIA and AIA treatment of patent prior art?
The America Invents Act (AIA) introduced significant changes to how patent prior art is treated compared to the pre-AIA system. The MPEP 2152.02(a) highlights a key difference:
“The AIA draws no distinction between patents and published patent applications as prior art.”
This change has several important implications:
- Pre-AIA: There were different rules for patents and published applications as prior art.
- AIA: Patents and published applications are treated equally as prior art.
- Pre-AIA: Secret prior art in granted patents had limited prior art effect.
- AIA: All content of a granted patent, including previously confidential information, becomes prior art upon grant.
- Pre-AIA: The effective date of a U.S. patent as prior art could be its foreign priority date under certain conditions.
- AIA: The effective date of a U.S. patent as prior art is its earliest effective filing date, including foreign priority date if applicable.
These changes simplify the prior art analysis and expand the scope of available prior art under the AIA system.
To learn more:
No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states:
Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
This means that as long as the PCT application designates the United States and is published by WIPO, it can be used as prior art under AIA 35 U.S.C. 102(a)(2). This is a significant change from pre-AIA law and expands the scope of prior art that must be considered in patentability determinations.
To learn more:
Under AIA 35 U.S.C. 102(a), there are two main categories of prior art:
- AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention.
- AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents.
The MPEP states: “The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2).” This means that these categories are used to determine the novelty and non-obviousness of a claimed invention.
To learn more:
AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
To learn more:
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
To learn more:
MPEP 2152 – Detailed Discussion Of Aia 35 U.S.C. 102(A) And (B) (1)
Under AIA 35 U.S.C. 102(a), there are two main categories of prior art:
- AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention.
- AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents.
The MPEP states: “The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2).” This means that these categories are used to determine the novelty and non-obviousness of a claimed invention.
To learn more:
MPEP 2152.02 – Prior Art Under Aia 35 U.S.C. 102(A)(1) (Patented (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
To learn more:
MPEP 2152.02(A) – Patented (1)
What is the difference between pre-AIA and AIA treatment of patent prior art?
The America Invents Act (AIA) introduced significant changes to how patent prior art is treated compared to the pre-AIA system. The MPEP 2152.02(a) highlights a key difference:
“The AIA draws no distinction between patents and published patent applications as prior art.”
This change has several important implications:
- Pre-AIA: There were different rules for patents and published applications as prior art.
- AIA: Patents and published applications are treated equally as prior art.
- Pre-AIA: Secret prior art in granted patents had limited prior art effect.
- AIA: All content of a granted patent, including previously confidential information, becomes prior art upon grant.
- Pre-AIA: The effective date of a U.S. patent as prior art could be its foreign priority date under certain conditions.
- AIA: The effective date of a U.S. patent as prior art is its earliest effective filing date, including foreign priority date if applicable.
These changes simplify the prior art analysis and expand the scope of available prior art under the AIA system.
To learn more:
MPEP 2152.04 – The Meaning Of "Disclosure" (1)
AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
To learn more:
MPEP 2154.01(A) – Wipo Published Applications (1)
No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states:
Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
This means that as long as the PCT application designates the United States and is published by WIPO, it can be used as prior art under AIA 35 U.S.C. 102(a)(2). This is a significant change from pre-AIA law and expands the scope of prior art that must be considered in patentability determinations.
To learn more:
MPEP 2154.01(B) – Determining When Subject Matter Was Effectively Filed Under Aia 35 U.S.C. 102(D) (2)
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
To learn more:
AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states:
“AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.“
This means that if a U.S. patent document claims priority to a foreign application, and that foreign application describes the subject matter in question, the effective filing date for prior art purposes can be the filing date of the foreign application. This change potentially creates more prior art by allowing earlier effective filing dates based on foreign priority claims.
To learn more:
MPEP 2154.02(A) – Prior Art Exception Under Aia 35 U.S.C. 102(B)(2)(A) To Aia 35 U.S.C. 102(A)(2) (Inventor – Originated Disclosure Exception) (1)
The AIA 35 U.S.C. 102(b)(2)(A) exception applies broadly to U.S. patent documents. According to the MPEP:
The 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception.
This means that the exception can potentially be applied to any U.S. patent, U.S. patent application publication, or WIPO published application, regardless of when it was published or filed. The key factor is whether the subject matter was obtained directly or indirectly from the inventor or joint inventor.
To learn more:
On Sale (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
To learn more:
Or In Public Use (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
To learn more:
Or Otherwise Available To The Public) (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
To learn more:
Patent Law (8)
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
To learn more:
AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states:
“AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.“
This means that if a U.S. patent document claims priority to a foreign application, and that foreign application describes the subject matter in question, the effective filing date for prior art purposes can be the filing date of the foreign application. This change potentially creates more prior art by allowing earlier effective filing dates based on foreign priority claims.
To learn more:
The AIA 35 U.S.C. 102(b)(2)(A) exception applies broadly to U.S. patent documents. According to the MPEP:
The 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception.
This means that the exception can potentially be applied to any U.S. patent, U.S. patent application publication, or WIPO published application, regardless of when it was published or filed. The key factor is whether the subject matter was obtained directly or indirectly from the inventor or joint inventor.
To learn more:
What is the difference between pre-AIA and AIA treatment of patent prior art?
The America Invents Act (AIA) introduced significant changes to how patent prior art is treated compared to the pre-AIA system. The MPEP 2152.02(a) highlights a key difference:
“The AIA draws no distinction between patents and published patent applications as prior art.”
This change has several important implications:
- Pre-AIA: There were different rules for patents and published applications as prior art.
- AIA: Patents and published applications are treated equally as prior art.
- Pre-AIA: Secret prior art in granted patents had limited prior art effect.
- AIA: All content of a granted patent, including previously confidential information, becomes prior art upon grant.
- Pre-AIA: The effective date of a U.S. patent as prior art could be its foreign priority date under certain conditions.
- AIA: The effective date of a U.S. patent as prior art is its earliest effective filing date, including foreign priority date if applicable.
These changes simplify the prior art analysis and expand the scope of available prior art under the AIA system.
To learn more:
No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states:
Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
This means that as long as the PCT application designates the United States and is published by WIPO, it can be used as prior art under AIA 35 U.S.C. 102(a)(2). This is a significant change from pre-AIA law and expands the scope of prior art that must be considered in patentability determinations.
To learn more:
Under AIA 35 U.S.C. 102(a), there are two main categories of prior art:
- AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention.
- AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents.
The MPEP states: “The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2).” This means that these categories are used to determine the novelty and non-obviousness of a claimed invention.
To learn more:
AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
To learn more:
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
To learn more:
Patent Procedure (8)
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
To learn more:
AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states:
“AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.“
This means that if a U.S. patent document claims priority to a foreign application, and that foreign application describes the subject matter in question, the effective filing date for prior art purposes can be the filing date of the foreign application. This change potentially creates more prior art by allowing earlier effective filing dates based on foreign priority claims.
To learn more:
The AIA 35 U.S.C. 102(b)(2)(A) exception applies broadly to U.S. patent documents. According to the MPEP:
The 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception.
This means that the exception can potentially be applied to any U.S. patent, U.S. patent application publication, or WIPO published application, regardless of when it was published or filed. The key factor is whether the subject matter was obtained directly or indirectly from the inventor or joint inventor.
To learn more:
What is the difference between pre-AIA and AIA treatment of patent prior art?
The America Invents Act (AIA) introduced significant changes to how patent prior art is treated compared to the pre-AIA system. The MPEP 2152.02(a) highlights a key difference:
“The AIA draws no distinction between patents and published patent applications as prior art.”
This change has several important implications:
- Pre-AIA: There were different rules for patents and published applications as prior art.
- AIA: Patents and published applications are treated equally as prior art.
- Pre-AIA: Secret prior art in granted patents had limited prior art effect.
- AIA: All content of a granted patent, including previously confidential information, becomes prior art upon grant.
- Pre-AIA: The effective date of a U.S. patent as prior art could be its foreign priority date under certain conditions.
- AIA: The effective date of a U.S. patent as prior art is its earliest effective filing date, including foreign priority date if applicable.
These changes simplify the prior art analysis and expand the scope of available prior art under the AIA system.
To learn more:
No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states:
Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
This means that as long as the PCT application designates the United States and is published by WIPO, it can be used as prior art under AIA 35 U.S.C. 102(a)(2). This is a significant change from pre-AIA law and expands the scope of prior art that must be considered in patentability determinations.
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Under AIA 35 U.S.C. 102(a), there are two main categories of prior art:
- AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention.
- AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents.
The MPEP states: “The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2).” This means that these categories are used to determine the novelty and non-obviousness of a claimed invention.
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AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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