How can an applicant show that another obtained the subject matter directly or indirectly from the inventor?
An applicant can demonstrate that another obtained the subject matter directly or indirectly from the inventor or a joint inventor through an affidavit or declaration under 37 CFR 1.130(a) or (b). The MPEP states: “An applicant may also show that another obtained the subject matter disclosed directly or indirectly from the inventor or a joint…
Read MoreWhat is the grace period disclosure exception under AIA 35 U.S.C. 102(b)(1)(A)?
The grace period disclosure exception under AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure made within the grace period shall not be considered prior art under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by another who obtained the subject matter directly or indirectly from the inventor or a joint inventor. As stated in…
Read MoreWhat documentation should accompany an affidavit or declaration under 37 CFR 1.130?
When submitting an affidavit or declaration under 37 CFR 1.130 to show that another obtained the subject matter directly or indirectly from the inventor or a joint inventor, it’s important to include supporting documentation. The MPEP advises: “Any documentation which provides evidence of the communication of the subject matter by the inventor or a joint…
Read MoreHow does the AIA’s first-inventor-to-file system affect grace period disclosures?
The America Invents Act (AIA) introduced the first-inventor-to-file system, which significantly impacts how grace period disclosures are treated. Under this system, the MPEP section 2155.03 is specifically applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA. The MPEP notes: [Editor Note: This MPEP section is only applicable…
Read MoreWhat is the difference between AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B)?
AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) provide similar exceptions for disclosures, but they apply to different types of prior art: 102(b)(1)(B) applies to grace period disclosures under 102(a)(1) (public disclosures) 102(b)(2)(B) applies to disclosures under 102(a)(2) (patent applications) The MPEP states: AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) respectively provide that a grace period disclosure under…
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