What is the status of unpublished U.S. applications as prior art under pre-AIA 35 U.S.C. 102(e)?
Unpublished U.S. applications can serve as prior art under pre-AIA 35 U.S.C. 102(e) in certain circumstances. According to the MPEP, If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine…
Read MoreWhat is the significance of redacted application publications in pre-AIA 35 U.S.C. 102(e) rejections?
Redacted application publications can play a role in pre-AIA 35 U.S.C. 102(e) rejections. The MPEP clarifies: In addition, a provisional rejection under pre-AIA 35 U.S.C. 102(e) may be made if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported…
Read MoreWhen 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pre-AIA 35 U.S.C. 102(e) can be made when there is a common assignee, applicant, or inventor between the earlier filed, unpublished application and the later filed application.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 MoreHow can a provisional rejection under pre-AIA 35 U.S.C. 102(e) be overcome?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in several ways. The MPEP states: A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a pre-AIA 35 U.S.C. 102(e) rejection can be overcome. See MPEP ยง 2136.05. Additionally, The provisional rejection can also be overcome by…
Read MoreHow does the CREATE Act affect provisional rejections under pre-AIA 35 U.S.C. 103(a)?
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) affects provisional rejections under pre-AIA 35 U.S.C. 103(a) by potentially disqualifying certain prior art references. The MPEP states: For applications filed on or after November 29, 1999 or pending on or after December 10, 2004, a provisional rejection under pre-AIA 35 U.S.C. 103(a) using…
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