What is a provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e)?
A provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e) is a specific type of rejection made in certain patent examination situations. The MPEP explains: “Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under…
Read MoreWhat is the significance of pre-AIA 35 U.S.C. 103(c) in patent examination?
Pre-AIA 35 U.S.C. 103(c) is significant in patent examination as it provides a way to disqualify certain prior art references in obviousness rejections. The MPEP states: “Examiners are reminded that a reference used in an anticipatory rejection under pre-AIA 35 U.S.C. 102(e), (f), or (g) is not disqualified as prior art if the reference is…
Read MoreHow can a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) be overcome?
There are several ways to overcome a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e). The MPEP outlines the following methods: Arguing patentability over the earlier filed application Combining the subject matter of the copending applications into a single application Filing an affidavit or declaration under 37…
Read MoreHow does a joint research agreement affect patent examination under pre-AIA 35 U.S.C. 103(c)?
A joint research agreement can have significant effects on patent examination under pre-AIA 35 U.S.C. 103(c). The MPEP provides an example: “Employee B’s invention claimed in his application was made after the joint research agreement was entered into, and it was made as a result of activities undertaken within the scope of the joint agreement.…
Read MoreWhat is the impact of the CREATE Act on double patenting rejections?
The CREATE Act has a significant impact on double patenting rejections in patent examination. The MPEP explains: “Congress recognized that this amendment to 35 U.S.C. 103(c) would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003).“ As…
Read MoreHow does common ownership affect patent examination under pre-AIA 35 U.S.C. 103(c)?
Common ownership plays a crucial role in patent examination under pre-AIA 35 U.S.C. 103(c). The MPEP provides guidance on this: “Applications and patents will be considered to be owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, if the applicant(s) or patent owner(s) make(s)…
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