When can a provisional rejection be made under pre-AIA 35 U.S.C. 102(e)?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be made when there is a common assignee, applicant, or inventor between the earlier filed, unpublished application and the later filed application. The MPEP states: Based on the assumption that an application will ripen into a U.S. patent (or into an application publication), it is permissible…
Read MoreWhen can a provisional rejection be made for copending applications?
A provisional rejection can be made for copending applications under specific circumstances. According to MPEP 2154.01(d): “If a first application has (1) at least one common (joint) inventor or common applicant with a second application or the applications are commonly assigned, and (2) the first application, upon publication or issuance, would qualify as prior art…
Read MoreWhen can a provisional rejection be made under AIA 35 U.S.C. 102(a)(2)?
A provisional rejection under AIA 35 U.S.C. 102(a)(2) can be made in certain circumstances involving copending U.S. patent applications. The MPEP outlines two main scenarios: Applications with common inventors, applicants, or assignees: A provisional rejection can be made if: The applications have at least one common inventor, common applicant, or are commonly assigned. The first…
Read MoreWhat is a provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e)?
A provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e) is a specific type of rejection made in certain patent examination situations. The MPEP explains: “Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under…
Read MoreWhat is a provisional rejection under 35 U.S.C. 102(a)(2)?
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d): “If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending…
Read MoreHow can provisional applications be used as prior art under pre-AIA 35 U.S.C. 102(e)?
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states: “Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35…
Read MoreHow are provisional application filing dates considered under pre-AIA 35 U.S.C. 102(e)?
The filing date of a provisional application can be critical for determining the prior art date under pre-AIA 35 U.S.C. 102(e), but specific conditions must be met. The MPEP states: “Note that for benefit claims under 35 U.S.C. 119(e), the critical reference date under pre-AIA 35 U.S.C. 102(e) may be the filing date of a…
Read MoreHow does a provisional application affect the critical reference date under pre-AIA 35 U.S.C. 102(e)?
A provisional application can affect the critical reference date under pre-AIA 35 U.S.C. 102(e) if certain conditions are met. The MPEP states: “The critical reference date under pre-AIA 35 U.S.C. 102(e) of a U.S. patent, a U.S. patent application publication, as well as an international application publication having prior art effect under pre-AIA 35 U.S.C.…
Read MoreHow 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 MoreHow can an applicant show that a reference is describing an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132. The MPEP states: “A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by filing an affidavit or declaration…
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