When should an examiner search for foreign patents under pre-AIA 35 U.S.C. 102(d)?
An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this: “The examiner should undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art only if there is a reasonable possibility that a foreign patent…
Read MoreWhat is Pre-AIA 35 U.S.C. 102(d) and when does it apply?
Pre-AIA 35 U.S.C. 102(d) is a provision of patent law that establishes statutory bars against granting a patent in the United States under certain conditions related to foreign patents or inventor’s certificates. It’s important to note that this provision is not applicable to applications subject to examination under the first inventor to file (FITF) provisions…
Read MoreHow can examiners search for foreign patents for pre-AIA 35 U.S.C. 102(d) rejections?
Examiners have several methods to search for foreign patents that could be used for pre-AIA 35 U.S.C. 102(d) rejections. The MPEP outlines the following approaches: Electronic database search: “The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information…
Read MoreHow does an examiner determine if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate?
An examiner determines if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate by discovering a foreign patent or inventor’s certificate that meets the statutory requirements. The MPEP states: “If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory…
Read MoreWhat types of documents can be used for a pre-AIA 35 U.S.C. 102(d) rejection?
For a pre-AIA 35 U.S.C. 102(d) rejection, only specific types of documents can be used. The MPEP clearly states: “The document must be a patent or inventor’s certificate and not merely a published or laid open application.“ This means that only granted patents or inventor’s certificates can serve as the basis for a pre-AIA 35…
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