How can the preamble provide antecedent basis for claim terms?
How can the preamble provide antecedent basis for claim terms? The preamble can provide antecedent basis for claim terms, which is an important consideration in determining whether the preamble limits the scope of a claim. According to MPEP 2111.02: “Preamble statements reciting the purpose or intended use of the claimed invention must be evaluated to…
Read MoreWhat are examples of pre-solution and post-solution activities?
Pre-solution and post-solution activities are types of insignificant extra-solution activities. The MPEP 2106.05(g) provides examples: Pre-solution activity: “A step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by…
Read MoreWhat is the “pre-AIPA” version of 35 U.S.C. 102(e) and when does it apply?
The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000. According to the MPEP, Patents issued directly, or indirectly, from…
Read MoreHow do the requirements for patent specifications differ between pre-AIA and AIA applications?
The requirements for patent specifications under 35 U.S.C. 112 are similar for both pre-AIA (applications filed before September 16, 2012) and AIA (applications filed on or after September 16, 2012) applications, but there are some differences in the language and structure of the statute. For AIA applications, 35 U.S.C. 112(a) states: “The specification shall contain…
Read MoreWhat determines if an application is subject to pre-AIA or AIA patent laws?
The determining factor for whether an application is subject to pre-AIA or AIA patent laws is its filing date. Applications filed before March 16, 2013, are governed by pre-AIA 35 U.S.C. 102 and 103. As stated in MPEP 2159.01: “The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any…
Read MoreCan an application change from pre-AIA to AIA status?
Yes, an application can change from pre-AIA to AIA status under certain conditions. According to MPEP 2159.02: “If an application filed on or after March 16, 2013, that did not previously contain any claim to a claimed invention having an effective filing date on or after March 16, 2013, (a pre-AIA application) is amended to…
Read MoreWhen do pre-AIA 35 U.S.C. 102 and 103 apply to applications filed on or after March 16, 2013?
Pre-AIA 35 U.S.C. 102 and 103 can still apply to applications filed on or after March 16, 2013, under specific circumstances. The MPEP states: “Applications filed on or after March 16, 2013 are also subject to pre-AIA 35 U.S.C. 102 if the application has never contained a claim with an effective filing date on or…
Read MoreHow do pre-AIA notions of obviousness apply under the AIA?
Generally, pre-AIA notions of obviousness continue to apply under the AIA, with some exceptions. The MPEP states: “Generally speaking, and with the exceptions noted herein, pre-AIA notions of obviousness continue to apply under the AIA.“ This means that many of the established principles and case law regarding obviousness determinations remain relevant under the AIA. However,…
Read MoreCan an application be subject to both pre-AIA and AIA provisions simultaneously?
Yes, an application can be subject to both pre-AIA and AIA provisions simultaneously, but with specific limitations. The MPEP 2159.03 states: “Thus, if an application contains, or contained at any time, any claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, any claim having…
Read MoreHow does pre-AIA 35 U.S.C. 103(c) apply to reissue applications?
The application of pre-AIA 35 U.S.C. 103(c) to reissue applications involves specific considerations, particularly regarding the doctrine of recapture. The MPEP states: “For reissue applications, the doctrine of recapture may prevent the presentation of claims in the reissue applications that were amended or cancelled from the application which matured into the patent for which reissue…
Read More