What does “by another who has not abandoned, suppressed, or concealed it” mean in patent law?

This phrase refers to a provision in pre-AIA 35 U.S.C. 102(g) that makes available as prior art the prior invention of another person who has not abandoned, suppressed, or concealed their invention. The MPEP states: “Pre-AIA 35 U.S.C. 102(g) generally makes available as prior art within the meaning of 35 U.S.C. 103, the prior invention…

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What issues are not considered in inter partes reexamination?

Inter partes reexamination is limited in scope and does not consider all potential issues related to patent validity. According to the MPEP, the following issues are not considered: Public use or on-sale activities Conduct issues Abandonment under pre-AIA 35 U.S.C. 102(c) Other issues not based on patents or printed publications The MPEP states: “If questions…

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How are improper grounds for reexamination handled?

Improper grounds for reexamination are those not based on prior art patents or printed publications. The MPEP provides guidance on how to handle such grounds: “If arguments are presented as to grounds not based on prior art patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b),…

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Can disclosure without claiming in a prior issued patent lead to abandonment under pre-AIA 35 U.S.C. 102(c)?

Disclosure without claiming in a prior issued patent does not automatically lead to abandonment under pre-AIA 35 U.S.C. 102(c). According to MPEP 2134: “Any inference of abandonment (i.e., intent to dedicate to the public) of subject matter disclosed but not claimed in a previously issued patent is rebuttable by an application filed at any time…

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What are the consequences of failing to make a required deposit within the specified time?

Failing to make a required deposit within the specified time can have serious consequences for a patent application. According to MPEP 2411.03: “Failure to make the needed deposit in accordance with this requirement will be considered a failure to prosecute the application under 35 U.S.C. 133 and result in abandonment of the application.” This means…

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What constitutes abandonment under pre-AIA 35 U.S.C. 102(c)?

Abandonment under pre-AIA 35 U.S.C. 102(c) requires intentional action by the inventor. According to MPEP 2134: “Actual abandonment under pre-AIA 35 U.S.C. 102(c) requires that the inventor intend to abandon the invention, and intent can be implied from the inventor’s conduct with respect to the invention.” This means that the inventor must deliberately surrender their…

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