What types of prior art can bar patentability under pre-AIA 35 U.S.C. 102(b)?
Under pre-AIA 35 U.S.C. 102(b), several types of prior art can bar patentability if they occur more than one year before the patent application’s filing date. The MPEP specifically mentions: Publications Patents Public uses Sales The MPEP states: “It does not matter how the public came into possession of the invention. Public possession could occur…
Read MoreWhat is the relationship between prior art knowledge and the level of detail required in a patent specification?
The relationship between prior art knowledge and the level of detail required in a patent specification is inverse. According to MPEP 2164.03: “The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less…
Read MoreHow does the “state of the prior art” impact the undue experimentation analysis?
The “state of the prior art” is an important Wands factor in determining whether undue experimentation is required to practice an invention. This factor considers: Existing knowledge in the field at the time of the invention Available techniques and technologies Level of predictability in the art As stated in MPEP 2164.01(a): “The state of the…
Read MoreWhat is the impact of prior art on CIP applications?
The impact of prior art on Continuation-In-Part (CIP) applications can be significant, especially for claims that are only supported by the CIP disclosure and not the parent application. According to MPEP 2133.01: “Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the…
Read MoreHow does the size of a prior art genus affect obviousness analysis?
The size of a prior art genus is a factor to consider in obviousness analysis, but it’s not determinative on its own. As stated in MPEP 2144.08: “Consider the size of the prior art genus, bearing in mind that size alone cannot support an obviousness rejection. There is no absolute correlation between the size of…
Read MoreWhat are the prior art exceptions under 35 U.S.C. 102(b)(1)?
The prior art exceptions under 35 U.S.C. 102(b)(1) are provisions that exclude certain disclosures from being considered as prior art under the America Invents Act (AIA). These exceptions apply to the first inventor to file (FITF) provisions of the AIA. The MPEP states: See MPEP § 2153.01 for prior art exceptions based on grace period…
Read MoreHow does the exception to the prior art rule affect patent litigation?
The exception to the prior art rule, as described in MPEP 2124, can have significant implications in patent litigation. This exception allows for the use of post-filing date evidence in certain circumstances, which can affect arguments related to enablement, written description, and the state of the art. For example, the Federal Circuit case Amgen Inc.…
Read MoreWhat is the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(B)?
The Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(B) provides an exception to prior art under AIA 35 U.S.C. 102(a)(2). This exception applies to subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or someone who obtained the subject matter directly or…
Read MoreIs proof of efficacy required for a prior art reference to be enabling for anticipation?
No, proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation. The MPEP 2122 cites a Federal Circuit decision that clarifies this point: “[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.” – Impax Labs. Inc. v. Aventis…
Read MoreHow are drawings in prior art interpreted for patent examination?
How are drawings in prior art interpreted for patent examination? Drawings in prior art are interpreted as follows for patent examination: Proportions of features: The drawings are not assumed to be to scale unless specifically described as such in the reference. Disclosed features: Drawings can anticipate claims if they clearly show the structure which is…
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