Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
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 foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
To learn more:
MPEP 2136.03 – Critical Reference Date (1)
No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
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:
Patent Law (2)
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 foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
To learn more:
Patent Procedure (2)
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 foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
To learn more: