What is the grace period disclosure under AIA 35 U.S.C. 102(b)(1)(B)?
The grace period disclosure under AIA 35 U.S.C. 102(b)(1)(B) provides that a disclosure shall not be considered prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor. As stated in the MPEP: AIA 35 U.S.C.…
Read MoreWhat is a grace period disclosure under AIA 35 U.S.C. 102(b)(1)(A)?
A grace period disclosure under AIA 35 U.S.C. 102(b)(1)(A) is a disclosure made by the inventor or a joint inventor within one year prior to the effective filing date of the claimed invention. Such a disclosure is not considered prior art under AIA 35 U.S.C. 102(a)(1). According to the MPEP, AIA 35 U.S.C. 102(b)(1)(A) provides…
Read MoreAre there geographic limitations on “on sale” activities under AIA?
No, there are no geographic limitations on “on sale” activities under AIA 35 U.S.C. 102(a)(1). The MPEP clearly states: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur. When formulating a rejection, Office personnel should consider evidence of sales activity, regardless of where the…
Read MoreHow does the AIA 35 U.S.C. 102(b)(2)(B) exception handle genus-species relationships?
The AIA 35 U.S.C. 102(b)(2)(B) exception has specific rules for handling genus-species relationships between the inventor’s prior disclosure and the intervening U.S. patent document. The MPEP provides clear guidance on this: Species disclosed by inventor, genus in intervening document: “If the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening…
Read MoreWhat are Form Paragraphs 7.48.aia and 7.48.fti in patent rejections?
Form Paragraphs 7.48.aia and 7.48.fti are standardized text used by patent examiners to reject claims based on an applicant’s failure to present claims for interference. These paragraphs are described in MPEP 2304.04(c). The main difference between the two is: 7.48.aia is used for applications filed on or after March 16, 2013, under the America Invents…
Read MoreWhat is the impact of foreign priority claims on the effective filing date?
Foreign priority claims can significantly impact the effective filing date of a claimed invention. The MPEP 2152.01 addresses this issue: “If the application claims the benefit of a foreign priority application under 35 U.S.C. 119(a)-(d), 365(a) or (b), or 386(a) or (b), the effective filing date is the filing date of the foreign priority application…
Read MoreHow does AIA 35 U.S.C. 102(d) treat foreign priority applications for prior art purposes?
AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states: “AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications…
Read MoreWhat is the difference between FITF and pre-AIA applications regarding admissions?
The treatment of admissions differs between applications subject to the First Inventor to File (FITF) provisions of the America Invents Act (AIA) and pre-AIA applications. MPEP 2152.03 specifically notes: “[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set…
Read MoreWhat is the significance of the “first inventor to file” system under the AIA?
The “first inventor to file” (FITF) system is a fundamental change introduced by the AIA. The MPEP section notes: “[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159…
Read MoreWhat is the significance of the first inventor to file (FITF) provisions in relation to MPEP 2155.02?
MPEP 2155.02 is specifically applicable to patent applications subject to examination under the first inventor to file (FITF) provisions of the America Invents Act (AIA). The MPEP states: [Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth…
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