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 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 6

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 7

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 8

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 9

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 10

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 11

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

Patent Law FAQ

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

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 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 (5)

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?

Patent Procedure (5)

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?