Patent Law FAQ

While both exceptions relate to prior public disclosures by inventors, there are key differences:

• AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date).
• AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2).

The MPEP states: “There is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.” This means that an inventor’s public disclosure can potentially disqualify a later-filed U.S. patent document as prior art, even if that document was filed years after the inventor’s disclosure.

However, it’s important to note that if the inventor’s public disclosure is not within the grace period, it would still qualify as prior art under AIA 35 U.S.C. 102(a)(1) and could not be excepted under AIA 35 U.S.C. 102(b)(1).

To learn more:

• AIA
• prior art exception
• grace period
• public disclosure

To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:

1. The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
2. The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
3. The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.

As stated in the MPEP: “If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2).“

To learn more:

• Joint Research Agreement
• AIA
• Patent Application
• Prior Art Exception

While both exceptions relate to prior public disclosures by inventors, there are key differences:

• AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date).
• AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2).

The MPEP states: “There is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.” This means that an inventor’s public disclosure can potentially disqualify a later-filed U.S. patent document as prior art, even if that document was filed years after the inventor’s disclosure.

However, it’s important to note that if the inventor’s public disclosure is not within the grace period, it would still qualify as prior art under AIA 35 U.S.C. 102(a)(1) and could not be excepted under AIA 35 U.S.C. 102(b)(1).

To learn more:

• AIA
• prior art exception
• grace period
• public disclosure

To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:

1. The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
2. The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
3. The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.

As stated in the MPEP: “If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2).“

To learn more:

• Joint Research Agreement
• AIA
• Patent Application
• Prior Art Exception

While both exceptions relate to prior public disclosures by inventors, there are key differences:

• AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date).
• AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2).

The MPEP states: “There is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.” This means that an inventor’s public disclosure can potentially disqualify a later-filed U.S. patent document as prior art, even if that document was filed years after the inventor’s disclosure.

However, it’s important to note that if the inventor’s public disclosure is not within the grace period, it would still qualify as prior art under AIA 35 U.S.C. 102(a)(1) and could not be excepted under AIA 35 U.S.C. 102(b)(1).

To learn more:

• AIA
• prior art exception
• grace period
• public disclosure

To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:

1. The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
2. The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
3. The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.

As stated in the MPEP: “If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2).“

To learn more:

• Joint Research Agreement
• AIA
• Patent Application
• Prior Art Exception

While both exceptions relate to prior public disclosures by inventors, there are key differences:

• AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date).
• AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2).

The MPEP states: “There is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.” This means that an inventor’s public disclosure can potentially disqualify a later-filed U.S. patent document as prior art, even if that document was filed years after the inventor’s disclosure.

However, it’s important to note that if the inventor’s public disclosure is not within the grace period, it would still qualify as prior art under AIA 35 U.S.C. 102(a)(1) and could not be excepted under AIA 35 U.S.C. 102(b)(1).

To learn more:

• AIA
• prior art exception
• grace period
• public disclosure

To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:

1. The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
2. The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
3. The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.

As stated in the MPEP: “If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2).“

To learn more:

• Joint Research Agreement
• AIA
• Patent Application
• Prior Art Exception