Does the enablement inquiry apply to “on sale” determinations under AIA?
No, the enablement inquiry does not apply to “on sale” determinations under AIA 35 U.S.C. 102(a)(1). This interpretation is consistent with pre-AIA law. The MPEP states: “[T]he enablement inquiry is not applicable to the question of whether a claimed invention is ‘on sale’ under pre-AIA 35 U.S.C. 102(b).” Since the AIA’s “on sale” provision is…
Read MoreWhat is the significance of the “effective filing date” in AIA public use determinations?
The “effective filing date” plays a crucial role in determining whether a public use qualifies as prior art under the AIA. The MPEP states: “[A] public use would need to occur before the effective filing date of the claimed invention to constitute prior art under AIA 35 U.S.C. 102(a)(1).” This means that any public use…
Read MoreWhat is the difference between 35 U.S.C. 102(a)(1) and 102(a)(2) rejections?
What is the difference between 35 U.S.C. 102(a)(1) and 102(a)(2) rejections? The main differences between 35 U.S.C. 102(a)(1) and 102(a)(2) rejections are: 102(a)(1) applies to prior art that was publicly available before the effective filing date of the claimed invention. This includes patents, printed publications, public use, on sale, or otherwise available to the public.…
Read MoreHow is “public use” determined under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), “public use” is determined by whether the use was available to the public. The MPEP states: “As discussed previously, public use under AIA 35 U.S.C. 102(a)(1) is limited to those uses that are available to the public.” This means that for a use to be considered “public,” it must be…
Read MoreHow does the AIA’s public use provision differ from pre-AIA law?
The AIA’s public use provision under 35 U.S.C. 102(a)(1) differs from pre-AIA law in several key aspects: Geographic Scope: AIA removed the “in this country” limitation, making public uses anywhere in the world relevant. Timing: AIA focuses on the effective filing date, while pre-AIA used a critical date one year prior to the U.S. application…
Read MoreDoes AIA 35 U.S.C. 102(a)(1) require prior art to be by others?
No, AIA 35 U.S.C. 102(a)(1) does not require prior art to be by others. The MPEP clearly states: “Under AIA 35 U.S.C. 102(a)(1), there is no requirement that the prior art relied upon be by others. Thus, any prior art which falls under AIA 35 U.S.C. 102(a)(1) need not be by another to constitute potentially…
Read MoreHow does the AIA’s “on sale” provision differ from pre-AIA law?
While the AIA’s “on sale” provision is largely interpreted similarly to pre-AIA law, there are some key differences. The MPEP highlights two main distinctions: Geographic limitations: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur.” This contrasts with pre-AIA law, which limited “on sale”…
Read MoreHow does the AIA affect the “by others” requirement in prior art?
The America Invents Act (AIA) eliminated the “by others” requirement that existed in pre-AIA 35 U.S.C. 102(a). This change significantly expands the scope of potential prior art under AIA 35 U.S.C. 102(a)(1). As stated in the MPEP: “A key difference between pre-AIA 35 U.S.C. 102(a) and AIA 35 U.S.C. 102(a)(1) is the requirement in pre-AIA…
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