Question 1

When does a revocation of power of attorney become effective?

Accepted Answer

A revocation of power of attorney becomes effective on the date it is received by the USPTO, not on the date it is accepted. As stated in MPEP 402.05: Revocation of a power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE). The Office will send an appropriate notification upon revocation.

To learn more:

Question 2

When did the provisions of 35 U.S.C. 386(a) and (b) become effective?

Accepted Answer

The provisions of 35 U.S.C. 386(a) and (b) became effective for certain types of applications filed on or after May 13, 2015. According to MPEP 213.07:

The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).

This means that the right of priority under these sections is only applicable to:

Nonprovisional applications
International applications (PCT)
International design applications

These applications must be filed on or after May 13, 2015, to be eligible for the priority rights under 35 U.S.C. 386(a) and (b). The same applies to patents issued from such applications.

For more information on 35 U.S.C. 386, visit: 35 U.S.C. 386.

For more information on effective date, visit: effective date.

For more information on nonprovisional application, visit: nonprovisional application.

Question 3

What is the significance of the September 21, 2004 date in relation to 37 CFR 1.57(b)?

Accepted Answer

The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b).

This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on effective date, visit: effective date.

For more information on incorporation by reference, visit: incorporation by reference.

Question 4

What is the significance of the filing date in a continuation-in-part application?

Accepted Answer

What is the significance of the filing date in a continuation-in-part application?

The filing date of a continuation-in-part (CIP) application is crucial for determining the effective date of certain disclosures. According to MPEP 201.08:

"The effective filing date of a claimed invention in a CIP application is determined on a claim-by-claim basis and not an application-by-application basis."

This means:

Subject matter carried over from the parent application retains the parent's filing date.
New matter introduced in the CIP receives the filing date of the CIP application.
Claims in the CIP are evaluated individually to determine which filing date applies based on their content.

Understanding this distinction is crucial for patent practitioners when assessing prior art and determining the scope of protection for inventions disclosed in CIP applications.

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Question 5

What is the significance of the filing date for foreign applications in priority claims?

Accepted Answer

The filing date of foreign applications is significant in priority claims for the following reasons:

It establishes the effective date of the priority claim.
The date accorded is the date on which the specification and drawing were filed, not necessarily the date of the petition (which is called the application in some countries).
This date is used to determine the applicability of prior art and the eligibility for certain patent term adjustments.

The MPEP states: "In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed." (MPEP 216)

Question 6

What is the effective date for the AIA 35 U.S.C. 102(b)(2)(C) exception?

Accepted Answer

What is the effective date for the AIA 35 U.S.C. 102(b)(2)(C) exception?

The AIA 35 U.S.C. 102(b)(2)(C) exception became effective on March 16, 2013. This exception applies to any patent, patent application publication, or WIPO published application that names another inventor and was effectively filed before the effective filing date of the claimed invention, where 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 not later than the effective filing date of the claimed invention.

As stated in MPEP 717.02:

The provision of 35 U.S.C. 102(b)(2)(C) applies to applications filed on or after March 16, 2013 and to patents issuing thereon.

It's important to note that this exception is part of the broader changes introduced by the America Invents Act (AIA) and its implementation date coincides with the transition to the first-inventor-to-file system.

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 7

What is the effective date for prior art exceptions under AIA 35 U.S.C. 102(b)(2)(C)?

Accepted Answer

The effective date for prior art exceptions under AIA 35 U.S.C. 102(b)(2)(C) is important to understand. According to MPEP 717.02(b):

The exception under AIA 35 U.S.C. 102(b)(2)(C) applies to all applications filed on or after March 16, 2013, and to applications filed before March 16, 2013 that are subject to the first inventor to file provisions of the AIA.

This means that for applications filed on or after March 16, 2013, or those subject to the first inventor to file provisions, the prior art exception can be invoked if the conditions are met.

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 8

What is the effective date for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C)?

russ.krajec@blueironip.com · Accepted Answer

What is the effective date for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C)?

The effective date for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C) is important to understand. According to the MPEP 717.02(a):

"The effective date of the CREATE Act provisions of the AIA is September 16, 2012."

This means that the prior art exception can be invoked for any application filed on or after September 16, 2012. For applications filed before this date, different rules may apply.

To learn more:

Question 9

What is the effective date for applying the AIA 35 U.S.C. 102(b)(2)(C) exception?

Accepted Answer

What is the effective date for applying the AIA 35 U.S.C. 102(b)(2)(C) exception?

The AIA 35 U.S.C. 102(b)(2)(C) exception applies to patent applications and patents subject to AIA 35 U.S.C. 102 and 103. According to MPEP 717.02:

'The date of this change in practice is the date of the enactment of the AIA, September 16, 2012.'

This means that the exception is applicable to:

Applications filed on or after March 16, 2013
Applications filed before March 16, 2013, that have a priority or effective filing date on or after March 16, 2013

It's important to note that the actual ownership or joint research agreement must be in place on or before the effective filing date of the claimed invention for the exception to apply.

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 10

What date must be overcome in a 37 CFR 1.131(a) affidavit or declaration?

Accepted Answer

When filing an affidavit or declaration under 37 CFR 1.131(a), the date that must be overcome is the effective date of the reference being used in the rejection. The MPEP clearly states:

The date to be overcome under 37 CFR 1.131(a) is the effective date of the reference (i.e., the date on which the reference is available as prior art).

It's important to note that for U.S. patents used as references, the date to be overcome is not the foreign priority date. The MPEP explains: The effective date of a domestic patent when used as a reference in a rejection under pre-AIA 35 U.S.C. 102(e) is not the foreign filing date to which the application for patent may have been entitled under 35 U.S.C. 119(a) during examination.

To learn more:

37 CFR 1.131(a)

Question 11

How is the effective date of a printed publication determined for 37 CFR 1.131(a) purposes?

Accepted Answer

For the purposes of 37 CFR 1.131(a) affidavits or declarations, the effective date of a printed publication is its publication date, not the date it was received by the publisher. The MPEP states:

A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher.

This is an important distinction for applicants and patent attorneys to consider when preparing to swear behind a reference. For more detailed information on determining the effective dates of printed publications, the MPEP directs readers to MPEP §§ 2128 - 2128.02.

To learn more:

37 CFR 1.131(a)

Patent Law FAQ

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority (3)

When did the provisions of 35 U.S.C. 386(a) and (b) become effective?

What is the significance of the September 21, 2004 date in relation to 37 CFR 1.57(b)?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the filing date in a continuation-in-part application?

MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)

What is the significance of the filing date for foreign applications in priority claims?

MPEP 213-Right of Priority of Foreign Application (1)

When did the provisions of 35 U.S.C. 386(a) and (b) become effective?

MPEP 216 - Entitlement to Priority (1)

What is the significance of the filing date for foreign applications in priority claims?

MPEP 217-Incorporation by Reference Under 37 CFR 1.57(b) (1)

What is the significance of the September 21, 2004 date in relation to 37 CFR 1.57(b)?

MPEP 400 - Representative of Applicant or Owner (1)

When does a revocation of power of attorney become effective?

Patent Law (5)

When does a revocation of power of attorney become effective?

When did the provisions of 35 U.S.C. 386(a) and (b) become effective?

What is the significance of the September 21, 2004 date in relation to 37 CFR 1.57(b)?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the filing date for foreign applications in priority claims?

Patent Procedure (5)

When does a revocation of power of attorney become effective?

When did the provisions of 35 U.S.C. 386(a) and (b) become effective?

What is the significance of the September 21, 2004 date in relation to 37 CFR 1.57(b)?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the filing date for foreign applications in priority claims?