What is the significance of WIPO published applications under AIA 35 U.S.C. 102(a)(2)?
Under the America Invents Act (AIA), WIPO published applications that designate the United States are treated as U.S. patent application publications for prior art purposes. This is significant because: They are considered prior art regardless of their international filing date It doesn’t matter if they are published in English or not They are prior art…
Read MoreHow does the language of publication affect WIPO applications as prior art under AIA?
Under the AIA, the language of publication does not affect the status of WIPO published applications as prior art. This is a significant change from the pre-AIA law. The MPEP states: Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art…
Read MoreHow are WIPO published applications treated under AIA 35 U.S.C. 102(a)(2)?
Under the AIA, WIPO published applications that designate the United States are treated as U.S. patent application publications for prior art purposes. This treatment applies regardless of: The international filing date Whether they are published in English Whether the PCT international application enters the national stage in the United States The MPEP states: The WIPO…
Read MoreHow does the effective filing date of a WIPO published application affect its use as prior art?
The effective filing date of a WIPO published application is crucial in determining its use as prior art. MPEP 2154.01(a) states: “The WIPO publication of a PCT international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2) under 35 U.S.C.…
Read MoreWhen was inter partes reexamination replaced by inter partes review?
Inter partes reexamination was replaced by inter partes review on September 16, 2012, as a result of the Leahy-Smith America Invents Act (AIA). The MPEP states: “Section 6(c) of the AIA replaced the inter partes reexamination process, effective September 16, 2012, with a new inter partes review process, such that on or after September 16,…
Read MoreWhen can an affidavit or declaration under 37 CFR 1.130(a) be used?
An affidavit or declaration under 37 CFR 1.130(a), also known as an affidavit or declaration of attribution, can be used in two specific situations: To establish that a disclosure was made by the inventor or joint inventor. To establish that the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor.…
Read MoreWhen did supplemental examination become available?
Supplemental examination became available on September 16, 2012. This new procedure was introduced as part of the Leahy-Smith America Invents Act (AIA). The MPEP states: “Supplemental examination became available on September 16, 2012, as a result of new section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on…
Read MoreCan an applicant voluntarily identify grace period inventor-originated disclosures?
Yes, an applicant can voluntarily identify grace period inventor-originated disclosures. The MPEP encourages this practice: “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). An applicant is not required to identify any prior inventor-originated disclosures or to use the format…
Read MoreHow does the USPTO treat disclosures with additional authors or inventors?
The USPTO’s treatment of disclosures with additional authors or inventors depends on how they relate to the named inventors in the patent application. According to MPEP 2153.01(a): 1. When the application names more inventors than the disclosure: “This means that in circumstances where an application names additional persons as joint inventors relative to the persons…
Read MoreHow does the USPTO treat admissions under the AIA?
The United States Patent and Trademark Office (USPTO) continues to treat admissions by applicants as prior art under the America Invents Act (AIA). This approach is consistent with pre-AIA practice. According to MPEP 2152.03: “The Office will continue to treat admissions by the applicant as prior art under the AIA.” This means that any statement…
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