How 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 MoreHow does pre-AIA 35 U.S.C. 103(c) affect double patenting rejections?
Pre-AIA 35 U.S.C. 103(c) does not affect double patenting rejections. The MPEP clearly states: “In addition, double patenting rejections, based on subject matter now disqualified as prior art in amended pre-AIA 35 U.S.C. 103(c), should still be made as appropriate. See 37 CFR 1.78(c) and MPEP § 804.” This means that even if certain subject…
Read MoreHow does pre-AIA 35 U.S.C. 103(c) affect anticipation rejections?
Pre-AIA 35 U.S.C. 103(c) specifically applies to obviousness rejections and does not affect anticipation rejections. The MPEP clearly states: “Pre-AIA 35 U.S.C. 103(c) applies only to prior art usable in an obviousness rejection under 35 U.S.C. 103. Subject matter that qualifies as anticipatory prior art under pre-AIA 35 U.S.C. 102 is not affected, and may…
Read MoreHow did the CREATE Act affect pre-AIA 35 U.S.C. 103(c)?
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) significantly expanded the scope of pre-AIA 35 U.S.C. 103(c). The MPEP states: “The CREATE Act amended pre-AIA 35 U.S.C. 103(c) to provide that subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person…
Read MoreWhat is the effective date for the changes made by the CREATE Act?
The CREATE Act has a specific effective date for its changes to pre-AIA 35 U.S.C. 103(c). According to the MPEP: “The effective date provision of the CREATE Act provided that its amendments shall apply to any patent (including any reissue patent) granted on or after December 10, 2004, except those patents subject to the current…
Read MoreWhat is the burden of establishing disqualification under pre-AIA 35 U.S.C. 103(c)?
The burden of establishing that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) lies with the applicant. The MPEP states: “The burden of establishing that subject matter is disqualified as prior art is placed on applicant once the examiner has established a prima facie case of obviousness based on the subject…
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