What determines if an application is subject to pre-AIA 35 U.S.C. 102 and 103?
An application is subject to pre-AIA 35 U.S.C. 102 and 103 if it was filed before March 16, 2013. As stated in the MPEP, Any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the application is a pre-AIA first to invent application). This means that the filing…
Read MoreHow does pre-AIA 35 U.S.C. 102(g) apply to applications filed after March 16, 2013?
Pre-AIA 35 U.S.C. 102(g) can still apply to applications filed after March 16, 2013, under certain conditions. According to MPEP 2159.03: “Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied.” This means that if an application contains or contained at any time a claim…
Read MoreHow does pre-AIA 35 U.S.C. 102(f) apply when other statutory grounds for rejection are not available?
Pre-AIA 35 U.S.C. 102(f) can be a useful statutory ground for rejection even when other grounds, such as pre-AIA 35 U.S.C. 102(a) or (e), are not available. The MPEP explains: Pre-AIA 35 U.S.C. 102(f) does not require an inquiry into the relative dates of a reference and the application, and therefore may be applicable where…
Read MoreHow does pre-AIA 35 U.S.C. 102(f) interact with pre-AIA 35 U.S.C. 103?
Pre-AIA 35 U.S.C. 102(f) can interact with pre-AIA 35 U.S.C. 103 in certain situations. The MPEP explains that subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(f) can be used as a basis for an ex parte rejection under pre-AIA 35 U.S.C. 103. However, there’s an important exception to this rule. The…
Read MoreCan pre-AIA 35 U.S.C. 102(e) references be used in obviousness rejections under 35 U.S.C. 103?
Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice: “The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in…
Read MoreWhat is the “practical application” test in Step 2A Prong Two of the subject matter eligibility analysis?
The “practical application” test is part of Step 2A Prong Two in the subject matter eligibility analysis, as described in MPEP 2106.04(d). This test evaluates whether the claim as a whole integrates the judicial exception into a practical application of that exception. The MPEP states: “A claim that integrates a judicial exception into a practical…
Read MoreWhat is the “practical application” test in patent eligibility?
The “practical application” test is part of Step 2A Prong Two of the patent eligibility analysis. It determines whether a claim that recites a judicial exception (abstract idea, law of nature, or natural phenomenon) integrates that exception into a practical application. If the claim integrates the exception into a practical application, it is not directed…
Read MoreCan applications filed after March 16, 2013 ever be subject to pre-AIA 35 U.S.C. 102?
Yes, certain applications filed on or after March 16, 2013, can be subject to pre-AIA 35 U.S.C. 102. The MPEP states: Certain applications filed on or after March 16, 2013 that claim the benefit of a filing date earlier than March 16, 2013 under 35 U.S.C. 120, 121, or 365 are also governed by pre-AIA…
Read MoreHow does the USPTO handle post-filing date evidence in enablement determinations?
The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a): “In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions: A later-dated reference may provide evidence of what one skilled in the art would have known…
Read MoreCan post-filing date references be used to demonstrate lack of enablement?
Generally, post-filing date references should not be used to demonstrate lack of enablement. MPEP 2164.05(a) states: “In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.“ However, there are exceptions to this rule. The MPEP explains: “Exceptions to this rule could occur if a later-dated reference provides…
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