Patent Law FAQ

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:

“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”

This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:

“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”

This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

To file a petition to accept an unintentionally delayed benefit claim, you should:

1. File the petition under 37 CFR 1.78
2. Explain the reasons for the delay and demonstrate that it was unintentional
3. Pay the required petition fee
4. Submit the benefit claim (either through a corrected ADS or specification amendment, depending on your application’s filing date)

As mentioned in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04).”

For more detailed information on filing these petitions, refer to MPEP § 211.04.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP states that “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” However, it’s important to note that a secret use of a process, even if the resulting product is commercially sold, does not necessarily constitute public use under pre-AIA 35 U.S.C. 102(a).

The key factor is whether the public could learn the claimed process by examining the product. If the process cannot be discerned from the product, then the commercial sale of the product resulting from a secret process does not qualify as public use under pre-AIA 35 U.S.C. 102(a).

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP clearly states that “The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’” This means that prior knowledge or use outside the United States, even if widespread in a foreign country, cannot be used as a basis for rejection under pre-AIA 35 U.S.C. 102(a).

The MPEP cites the case of In re Ekenstam to support this interpretation. It’s important to note that despite changes made to pre-AIA 35 U.S.C. 104 by NAFTA and the Uruguay Round Agreements Act, the phrase “in this country” in pre-AIA 35 U.S.C. 102(a) still refers only to the United States and does not include other WTO or NAFTA member countries.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:

“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”

This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.

As stated in MPEP 2133.03(e):

“The question posed by the experimental use doctrine is ‘whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.’”

Key factors in determining if the experimental use exception applies include:

• The necessity for public testing
• The amount of control retained by the inventor
• The nature of the invention
• The length of the test period
• Whether payment was made
• Whether there was a secrecy obligation
• Whether records of the experiment were kept
• The degree of commercial exploitation during testing

It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:

“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)

This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The “in this country” limitation in Pre-AIA 35 U.S.C. 102(a) applies specifically to the “known or used” clause of the statute. The MPEP clarifies:

“The knowledge or use relied on must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).”

This means that for prior art to be considered under the “known or used” provision, the knowledge or use must have occurred within the United States. However, it’s important to note that this geographical limitation does not apply to printed publications or patents. A printed publication or patent from anywhere in the world can still be used as prior art under this section if it meets the other criteria.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.

According to the MPEP:

The critical date is the date one year prior to the effective filing date of the application. Any printed publication having a date earlier than the critical date is a potential reference under pre-AIA 35 U.S.C. 102(b) against the claimed invention.

Source: MPEP 2133.02(a)

The critical date is important because:

• Any public disclosure, sale, or use of the invention before the critical date can be used as prior art against the application.
• It sets a time limit for inventors to file their patent applications after public disclosure.
• It helps determine the validity of potential prior art references in rejections.

Understanding the critical date is essential for both patent examiners and applicants in assessing the patentability of an invention under pre-AIA 35 U.S.C. 102(b).

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:

“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”

This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:

“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)

This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP states that “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” However, it’s important to note that a secret use of a process, even if the resulting product is commercially sold, does not necessarily constitute public use under pre-AIA 35 U.S.C. 102(a).

The key factor is whether the public could learn the claimed process by examining the product. If the process cannot be discerned from the product, then the commercial sale of the product resulting from a secret process does not qualify as public use under pre-AIA 35 U.S.C. 102(a).

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP clearly states that “The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’” This means that prior knowledge or use outside the United States, even if widespread in a foreign country, cannot be used as a basis for rejection under pre-AIA 35 U.S.C. 102(a).

The MPEP cites the case of In re Ekenstam to support this interpretation. It’s important to note that despite changes made to pre-AIA 35 U.S.C. 104 by NAFTA and the Uruguay Round Agreements Act, the phrase “in this country” in pre-AIA 35 U.S.C. 102(a) still refers only to the United States and does not include other WTO or NAFTA member countries.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The “in this country” limitation in Pre-AIA 35 U.S.C. 102(a) applies specifically to the “known or used” clause of the statute. The MPEP clarifies:

“The knowledge or use relied on must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).”

This means that for prior art to be considered under the “known or used” provision, the knowledge or use must have occurred within the United States. However, it’s important to note that this geographical limitation does not apply to printed publications or patents. A printed publication or patent from anywhere in the world can still be used as prior art under this section if it meets the other criteria.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

To file a petition to accept an unintentionally delayed benefit claim, you should:

1. File the petition under 37 CFR 1.78
2. Explain the reasons for the delay and demonstrate that it was unintentional
3. Pay the required petition fee
4. Submit the benefit claim (either through a corrected ADS or specification amendment, depending on your application’s filing date)

As mentioned in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04).”

For more detailed information on filing these petitions, refer to MPEP § 211.04.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.

According to the MPEP:

The critical date is the date one year prior to the effective filing date of the application. Any printed publication having a date earlier than the critical date is a potential reference under pre-AIA 35 U.S.C. 102(b) against the claimed invention.

Source: MPEP 2133.02(a)

The critical date is important because:

• Any public disclosure, sale, or use of the invention before the critical date can be used as prior art against the application.
• It sets a time limit for inventors to file their patent applications after public disclosure.
• It helps determine the validity of potential prior art references in rejections.

Understanding the critical date is essential for both patent examiners and applicants in assessing the patentability of an invention under pre-AIA 35 U.S.C. 102(b).

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.

As stated in MPEP 2133.03(e):

“The question posed by the experimental use doctrine is ‘whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.’”

Key factors in determining if the experimental use exception applies include:

• The necessity for public testing
• The amount of control retained by the inventor
• The nature of the invention
• The length of the test period
• Whether payment was made
• Whether there was a secrecy obligation
• Whether records of the experiment were kept
• The degree of commercial exploitation during testing

It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

To file a petition to accept an unintentionally delayed benefit claim, you should:

1. File the petition under 37 CFR 1.78
2. Explain the reasons for the delay and demonstrate that it was unintentional
3. Pay the required petition fee
4. Submit the benefit claim (either through a corrected ADS or specification amendment, depending on your application’s filing date)

As mentioned in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04).”

For more detailed information on filing these petitions, refer to MPEP § 211.04.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP states that “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” However, it’s important to note that a secret use of a process, even if the resulting product is commercially sold, does not necessarily constitute public use under pre-AIA 35 U.S.C. 102(a).

The key factor is whether the public could learn the claimed process by examining the product. If the process cannot be discerned from the product, then the commercial sale of the product resulting from a secret process does not qualify as public use under pre-AIA 35 U.S.C. 102(a).

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP clearly states that “The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’” This means that prior knowledge or use outside the United States, even if widespread in a foreign country, cannot be used as a basis for rejection under pre-AIA 35 U.S.C. 102(a).

The MPEP cites the case of In re Ekenstam to support this interpretation. It’s important to note that despite changes made to pre-AIA 35 U.S.C. 104 by NAFTA and the Uruguay Round Agreements Act, the phrase “in this country” in pre-AIA 35 U.S.C. 102(a) still refers only to the United States and does not include other WTO or NAFTA member countries.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:

“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”

This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.

As stated in MPEP 2133.03(e):

“The question posed by the experimental use doctrine is ‘whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.’”

Key factors in determining if the experimental use exception applies include:

• The necessity for public testing
• The amount of control retained by the inventor
• The nature of the invention
• The length of the test period
• Whether payment was made
• Whether there was a secrecy obligation
• Whether records of the experiment were kept
• The degree of commercial exploitation during testing

It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:

“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)

This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The “in this country” limitation in Pre-AIA 35 U.S.C. 102(a) applies specifically to the “known or used” clause of the statute. The MPEP clarifies:

“The knowledge or use relied on must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).”

This means that for prior art to be considered under the “known or used” provision, the knowledge or use must have occurred within the United States. However, it’s important to note that this geographical limitation does not apply to printed publications or patents. A printed publication or patent from anywhere in the world can still be used as prior art under this section if it meets the other criteria.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.

According to the MPEP:

The critical date is the date one year prior to the effective filing date of the application. Any printed publication having a date earlier than the critical date is a potential reference under pre-AIA 35 U.S.C. 102(b) against the claimed invention.

Source: MPEP 2133.02(a)

The critical date is important because:

• Any public disclosure, sale, or use of the invention before the critical date can be used as prior art against the application.
• It sets a time limit for inventors to file their patent applications after public disclosure.
• It helps determine the validity of potential prior art references in rejections.

Understanding the critical date is essential for both patent examiners and applicants in assessing the patentability of an invention under pre-AIA 35 U.S.C. 102(b).

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

To file a petition to accept an unintentionally delayed benefit claim, you should:

1. File the petition under 37 CFR 1.78
2. Explain the reasons for the delay and demonstrate that it was unintentional
3. Pay the required petition fee
4. Submit the benefit claim (either through a corrected ADS or specification amendment, depending on your application’s filing date)

As mentioned in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04).”

For more detailed information on filing these petitions, refer to MPEP § 211.04.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP states that “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” However, it’s important to note that a secret use of a process, even if the resulting product is commercially sold, does not necessarily constitute public use under pre-AIA 35 U.S.C. 102(a).

The key factor is whether the public could learn the claimed process by examining the product. If the process cannot be discerned from the product, then the commercial sale of the product resulting from a secret process does not qualify as public use under pre-AIA 35 U.S.C. 102(a).

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP clearly states that “The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’” This means that prior knowledge or use outside the United States, even if widespread in a foreign country, cannot be used as a basis for rejection under pre-AIA 35 U.S.C. 102(a).

The MPEP cites the case of In re Ekenstam to support this interpretation. It’s important to note that despite changes made to pre-AIA 35 U.S.C. 104 by NAFTA and the Uruguay Round Agreements Act, the phrase “in this country” in pre-AIA 35 U.S.C. 102(a) still refers only to the United States and does not include other WTO or NAFTA member countries.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:

“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”

This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.

As stated in MPEP 2133.03(e):

“The question posed by the experimental use doctrine is ‘whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.’”

Key factors in determining if the experimental use exception applies include:

• The necessity for public testing
• The amount of control retained by the inventor
• The nature of the invention
• The length of the test period
• Whether payment was made
• Whether there was a secrecy obligation
• Whether records of the experiment were kept
• The degree of commercial exploitation during testing

It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:

“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)

This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The “in this country” limitation in Pre-AIA 35 U.S.C. 102(a) applies specifically to the “known or used” clause of the statute. The MPEP clarifies:

“The knowledge or use relied on must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).”

This means that for prior art to be considered under the “known or used” provision, the knowledge or use must have occurred within the United States. However, it’s important to note that this geographical limitation does not apply to printed publications or patents. A printed publication or patent from anywhere in the world can still be used as prior art under this section if it meets the other criteria.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.

According to the MPEP:

The critical date is the date one year prior to the effective filing date of the application. Any printed publication having a date earlier than the critical date is a potential reference under pre-AIA 35 U.S.C. 102(b) against the claimed invention.

Source: MPEP 2133.02(a)

The critical date is important because:

• Any public disclosure, sale, or use of the invention before the critical date can be used as prior art against the application.
• It sets a time limit for inventors to file their patent applications after public disclosure.
• It helps determine the validity of potential prior art references in rejections.

Understanding the critical date is essential for both patent examiners and applicants in assessing the patentability of an invention under pre-AIA 35 U.S.C. 102(b).