Q: What are the main categories of prior art under AIA 35 U.S.C. 102(a)?

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 prior art 35 U.S.C. 102(a) patent documents public disclosure

Question 1

How does the AIA 35 U.S.C. 102(b)(2)(A) exception apply to U.S. patent documents?

Accepted Answer

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.

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Question 2

What is an Information Disclosure Statement (IDS) in patent applications?

Accepted Answer

An Information Disclosure Statement (IDS) is a mechanism by which patent applicants can comply with the duty of disclosure provided in 37 CFR 1.56. It allows applicants to submit information that is material to patentability to the U.S. Patent and Trademark Office (USPTO).

According to the MPEP, The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56 using an IDS. This means that an IDS is a formal way to disclose relevant prior art and other information to the patent examiner.

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Question 3

What are the main categories of prior art under AIA 35 U.S.C. 102(a)?

Accepted Answer

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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Question 4

What is the correct procedure for submitting corrected drawings in response to a prior art figure objection?

Accepted Answer

When responding to an objection regarding unlabeled prior art figures, applicants must follow specific procedures for submitting corrected drawings. According to MPEP 608.02(g), the process involves:

Submitting corrected drawings in compliance with 37 CFR 1.121(d).
Labeling the replacement sheet(s) as 'Replacement Sheet' in the page header, as per 37 CFR 1.84(c).
Ensuring that the labeling does not obstruct any portion of the drawing figures.
Designating the prior art figure with a legend such as 'Prior Art'.

The MPEP states: Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled 'Replacement Sheet' in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures.

It's crucial to follow these instructions carefully to ensure that the objection is resolved and to avoid further complications in the patent prosecution process.

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Question 5

How does 35 U.S.C. 102(a)(2) apply to patent applications?

Accepted Answer

35 U.S.C. 102(a)(2) applies to certain patent documents as prior art. The MPEP states:

"U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention."

Key points to understand:

The reference's effectively filed date must be before the claimed invention's effective filing date
The reference can be prior art even if its publication date is after the claimed invention's effective filing date
35 U.S.C. 102(d) determines when subject matter in these documents was "effectively filed"

Exceptions to 102(a)(2) prior art are provided in 35 U.S.C. 102(b)(2), including disclosures of the inventor's own work and common ownership scenarios.

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Question 6

How does a prior foreign application affect the determination of prior art?

Accepted Answer

A prior foreign application can significantly affect the determination of prior art in U.S. patent examination. MPEP § 1302.06 directs us to MPEP § 202 and MPEP § 214 for detailed information on this topic.

Key points to consider:

The foreign priority date can be used as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(2).
This can disqualify certain references as prior art if they were published after the foreign priority date.
The content of the foreign application must support the claims in the U.S. application to benefit from the earlier priority date.

Understanding these nuances is crucial for patent examiners in conducting thorough prior art searches and for applicants in assessing the patentability of their inventions.

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Question 7

Can I delete a benefit claim, and what are the implications?

Accepted Answer

Yes, you can delete a benefit claim, but it's important to understand the process and potential implications:

For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you're unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

Question 8

What happens if a continuation-in-part application includes new matter not disclosed in the parent application?

Accepted Answer

When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:

Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application's filing date.
Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
The new matter may affect the application's ability to overcome prior art references.

As stated in MPEP 211.05:

"Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application."

This differentiation in filing dates for different claims within the same CIP application can significantly impact the application's ability to overcome prior art and maintain patentability.

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Question 9

What should be included in the Background of the Invention section of a patent application?

Accepted Answer

The Background of the Invention section in a patent application may include two main parts:

Field of the Invention: A statement describing the field of art to which the invention pertains. This may include a paraphrasing of applicable Cooperative Patent Classification (CPC) definitions.
Description of the related art: Information about the state of the prior art, including references to specific prior art where appropriate. This section should also describe any problems in the prior art that the invention solves.

It's important to note that while these components are typical, they are not strictly required. As stated in MPEP 608.01(c), "The Background of the Invention may (but is not required to) include the following parts..."

To learn more:

Background of the Invention
Patent Application
Field of Invention
Prior Art

Question 10

What is a new ground of rejection in patent examination?

Accepted Answer

A new ground of rejection in patent examination refers to a rejection that introduces new prior art or a new statutory basis for rejecting a claim. However, the specific definition can be complex. The MPEP provides guidance on what constitutes a new ground of rejection in MPEP § 1207.03(a).

It's important to note that not all new rejections are considered new grounds of rejection. For example, as stated in MPEP 706.07(a): "Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner."

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Question 11

How does the USPTO handle prior art rejections when the reference names a different inventive entity with at least one common inventor?

Accepted Answer

When the USPTO handles prior art rejections where the reference names a different inventive entity with at least one common inventor, the following process is typically followed:

The examiner will treat the reference as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g).
The applicant can overcome this rejection by filing an affidavit or declaration under 37 CFR 1.131(a) to antedate the reference.
Alternatively, the applicant can file an affidavit or declaration under 37 CFR 1.132 to show that the relevant portions of the reference originated with or were obtained from the inventor or at least one joint inventor.

As stated in MPEP 715.01(a): "When the reference in question is a noncommonly owned U.S. patent or patent application publication which qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) and which substantially shows or describes but does not claim the same patentable invention, an affidavit or declaration under 37 CFR 1.131(a) may be used to overcome only the prior art effect of the patent or publication."

To learn more:

prior art
inventive entity
common inventor
affidavit
declaration

Question 12

What is 'swearing behind' a reference?

russ.krajec@blueironip.com · Accepted Answer

'Swearing behind' a reference refers to the process of filing an affidavit or declaration under 37 CFR 1.131(a) to overcome a rejection in certain patent applications. This process allows an applicant or patent owner to establish a date of completion of the invention prior to the effective date of a reference used in a rejection.

According to the MPEP, Such a rejection may be overcome, in certain instances noted below, by filing of an affidavit or declaration under 37 CFR 1.131(a), known as 'swearing behind' the reference. It's important to note that it is the rejection that is withdrawn and not the reference.

To learn more:

37 CFR 1.131(a)

Question 13

In what situations are the provisions of 37 CFR 1.130 available in patent applications?

Accepted Answer

According to MPEP 717.01(d), the provisions of 37 CFR 1.130 are available in the following situations:

When the rejection is based on a disclosure other than a U.S. patent or U.S. patent application publication, such as non-patent literature or a foreign patent document.
When the rejection is based on a U.S. patent or U.S. patent application, but the patent or pending application did not claim an invention that is the same or substantially the same as the applicant's claimed invention.
When the rejection is based on a U.S. patent or U.S. patent application that does claim an invention that is the same or substantially the same as the applicant's claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention.

The MPEP provides an example for the third situation: "an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or 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."

These provisions allow applicants to overcome certain prior art rejections by providing evidence of earlier invention or public disclosure.

To learn more:

37 CFR 1.130

Question 14

How does a declaration of attribution under 37 CFR 1.130(a) work?

Accepted Answer

A declaration of attribution under 37 CFR 1.130(a) is used to establish that a disclosure was made by the inventor or joint inventor, or that the subject matter was obtained from them. According to MPEP 717.01(a)(1):

'37 CFR 1.130(a) provides that an affidavit or declaration of attribution may be submitted to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.'

This type of declaration is particularly useful when an inventor needs to prove that a seemingly prior art disclosure actually originated from their own work, thus disqualifying it as prior art under 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).

To learn more:

37 CFR 1.130(a)

Question 15

What is the status of abandoned applications as prior art?

Accepted Answer

Abandoned applications can serve as prior art under certain conditions:

If the abandoned application was previously published under 35 U.S.C. 122(b), it's considered prior art as of its publication date under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1).
The MPEP states: "If an abandoned application was previously published under 35 U.S.C. 122(b), that patent application publication is available as prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of its patent application publication date."
Unpublished abandoned applications may become prior art if they are identified or claimed in certain published documents, as per 37 CFR 1.14(a)(1)(iv).

To learn more:

abandoned applications
prior art
patent law
USPTO

Question 16

How can canceled matter from U.S. patent files be used as prior art?

Accepted Answer

While canceled matter is not a proper reference as of the filing date, it can still be used as prior art under certain conditions:

According to MPEP 901.01: "Matter canceled from the application file wrapper of a U.S. patent or U.S. application publication may be used as prior art as of the patent or publication date, respectively, in that it then constitutes prior public knowledge or prior public availability under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a)."

This means that canceled matter can be considered prior art from the date the patent was issued or the application was published, as it becomes publicly available information at that point. Patent examiners and attorneys should be aware of this distinction when evaluating potential prior art during patent prosecution or litigation.

To learn more:

Question 17

How do CPC scheme warnings affect patent searches?

Accepted Answer

CPC scheme warnings can significantly impact patent searches by alerting researchers to potential classification discrepancies and changes. The MPEP 905.01(a)(3) indicates that warnings can provide information on:

"...deviations from IPC or incomplete classification... IPC groups not included within CPC and the CPC group which covers the relevant subject matter... deletion or transferring of CPC groups and reclassification notices."

This information helps researchers:

Identify potential gaps in CPC coverage
Understand where to look for related art in IPC
Stay informed about recent classification changes
Ensure comprehensive searches across both CPC and IPC systems

By paying attention to these warnings, patent searchers can conduct more thorough and accurate prior art searches.

To learn more:

Question 18

What is the significance of Derwent World Patents Index in patent searches?

Accepted Answer

What is the significance of Derwent World Patents Index in patent searches?

The Derwent World Patents Index is a valuable resource for patent searches, as mentioned in MPEP 901.06(d):

"The DERWENT World Patents Index (WPI), and the Derwent World Patents Index (DWPI) since 2009, contain English abstracts of patent documents from 41 countries and two international searching authorities. The coverage includes English language equivalent abstracts of foreign language patent documents."

This index is significant because:

It provides English abstracts for patents from multiple countries, making it easier to search and understand foreign patents.
It covers a wide range of countries and international searching authorities, offering comprehensive global patent information.
It helps patent examiners and researchers to quickly identify relevant prior art across different languages and jurisdictions.

Utilizing the Derwent World Patents Index can significantly enhance the effectiveness and efficiency of patent searches, especially for international or multi-language patent research.

To learn more:

Derwent World Patents Index
Patent Searches
Prior Art

Question 19

What are the reasons for withdrawing a patent application from issue?

Accepted Answer

There are several reasons why an applicant or the USPTO might withdraw a patent application from issue:

Discovery of new prior art: If relevant prior art is found that could affect patentability
Errors in the application: To correct mistakes or omissions in the application
Desire to file a Request for Continued Examination (RCE): To introduce new amendments or evidence
Interference proceedings: If an interference is declared involving the application
National security concerns: For applications that may impact national security

According to MPEP 1308: "A petition under 37 CFR 1.313(c) to have an application withdrawn from issue should be filed if applicant desires to have an information disclosure statement considered or to have prosecution reopened."

To learn more:

Question 20

What is the "relevant date" for determining prior art in PCT applications?

Accepted Answer

The "relevant date" for determining prior art in PCT applications is defined in MPEP 1878.01(a), which cites PCT Rule 64.1(b). The relevant date is generally:

The international filing date of the application
The filing date of an earlier application if priority is validly claimed and the international filing date is within the priority period
The filing date of an earlier application if priority is claimed, the international filing date is within two months after the priority period expired, and the Authority considers the priority claim valid

The examiner must consider the validity of the priority claim when determining the relevant date, especially when potentially relevant documents are published between the claimed priority date and the international filing date.

To learn more:

Relevant Date
Prior Art
PCT Applications
Priority Claim

Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 200 – Types and Status of Application; Benefit and Priority (2)

Can I delete a benefit claim, and what are the implications?

What happens if a continuation-in-part application includes new matter not disclosed in the parent application?

MPEP 2100 – Patentability (3)

How does the AIA 35 U.S.C. 102(b)(2)(A) exception apply to U.S. patent documents?

What are the main categories of prior art under AIA 35 U.S.C. 102(a)?

How does 35 U.S.C. 102(a)(2) apply to patent applications?

MPEP 211 – Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)

Can I delete a benefit claim, and what are the implications?

MPEP 2152 – Detailed Discussion Of Aia 35 U.S.C. 102(A) And (B) (1)

What are the main categories of prior art under AIA 35 U.S.C. 102(a)?

MPEP 2152.05 – Determining Whether To Apply 35 U.S.C. 102(A)(1) Or 102(A)(2) (1)

How does 35 U.S.C. 102(a)(2) apply to patent applications?

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)

How does the AIA 35 U.S.C. 102(b)(2)(A) exception apply to U.S. patent documents?

Patent Law (8)

How does the AIA 35 U.S.C. 102(b)(2)(A) exception apply to U.S. patent documents?

What is an Information Disclosure Statement (IDS) in patent applications?

What are the main categories of prior art under AIA 35 U.S.C. 102(a)?

What is the correct procedure for submitting corrected drawings in response to a prior art figure objection?

How does 35 U.S.C. 102(a)(2) apply to patent applications?

Can I delete a benefit claim, and what are the implications?

What happens if a continuation-in-part application includes new matter not disclosed in the parent application?

What should be included in the Background of the Invention section of a patent application?

Patent Procedure (8)

How does the AIA 35 U.S.C. 102(b)(2)(A) exception apply to U.S. patent documents?

What is an Information Disclosure Statement (IDS) in patent applications?

What are the main categories of prior art under AIA 35 U.S.C. 102(a)?

What is the correct procedure for submitting corrected drawings in response to a prior art figure objection?

How does 35 U.S.C. 102(a)(2) apply to patent applications?

Can I delete a benefit claim, and what are the implications?

What happens if a continuation-in-part application includes new matter not disclosed in the parent application?

What should be included in the Background of the Invention section of a patent application?