Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (3)
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
To learn more:
35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the 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.”
- 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.”
- 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.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
To learn more:
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
To learn more:
MPEP 2133.02 – Rejections Based On Publications And Patents (1)
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
To learn more:
MPEP 2136.05 – Overcoming A Rejection Under Pre – Aia 35 U.S.C. 102(E) (1)
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
To learn more:
MPEP 2152.05 – Determining Whether To Apply 35 U.S.C. 102(A)(1) Or 102(A)(2) (1)
35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the 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.”
- 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.”
- 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.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
To learn more:
Patent Law (3)
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
To learn more:
35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the 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.”
- 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.”
- 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.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
To learn more:
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
To learn more:
Patent Procedure (3)
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
To learn more:
35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the 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.”
- 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.”
- 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.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
To learn more:
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
To learn more: