What is the First Inventor to File (FITF) provision?
The First Inventor to File (FITF) provision is a key component of the America Invents Act (AIA) that changed the U.S. patent system from a “first-to-invent” to a “first-inventor-to-file” system. This provision applies to certain patent applications filed on or after March 16, 2013. The MPEP section 2153 notes: [Editor Note: This MPEP section is…
Read MoreHow does the first inventor to file (FITF) provision affect prior art considerations?
The first inventor to file (FITF) provision, introduced by the America Invents Act (AIA), significantly affects prior art considerations. The MPEP section 2154 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…
Read MoreWhat are the Applicability Date Provisions for the First Inventor To File System?
The Applicability Date Provisions for the First Inventor To File System are outlined in MPEP 2159. These provisions determine whether an application is subject to the America Invents Act (AIA) or pre-AIA laws. According to MPEP 2159: “Because the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA apply only to specific…
Read MoreWhat is the significance of the filing date in relation to the grace period?
The filing date of a patent application is crucial in determining whether a disclosure falls within the grace period and qualifies for the inventor-originated disclosure exception. According to MPEP 2153.01(a): “AIA 35 U.S.C. 102(b)(1)(A) first provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is excepted as prior…
Read MoreWhat are the exceptions to public use under AIA 35 U.S.C. 102(b)(1)?
The AIA provides exceptions to what would otherwise be considered public use under 35 U.S.C. 102(a)(1). These exceptions are outlined in 35 U.S.C. 102(b)(1). The MPEP states: “[C]ertain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with…
Read MoreAre there any exceptions to prior art under AIA 35 U.S.C. 102(a)(2)?
Yes, there are exceptions to prior art under AIA 35 U.S.C. 102(a)(2). These exceptions are outlined in 35 U.S.C. 102(b)(2). The MPEP section 2154 states: “See MPEP § 2154.02 et seq. for prior art exceptions under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2).“ The exceptions generally fall into three categories: Disclosures made 1 year…
Read MoreAre there any exceptions to the “names another inventor” requirement in AIA 35 U.S.C. 102(a)(2)?
While the “names another inventor” requirement is a key aspect of AIA 35 U.S.C. 102(a)(2), there are exceptions that may prevent a U.S. patent document from being used as prior art even if it names another inventor. MPEP 2154.01(c) mentions: “Even if there are one or more joint inventors in common in a U.S. patent…
Read MoreWhat are some examples of disclosures that could be “otherwise available to the public”?
The MPEP 2152.02(e) provides several examples of disclosures that could be considered “otherwise available to the public” under AIA 35 U.S.C. 102(a)(1): A student thesis in a university library A poster display or information disseminated at a scientific meeting Subject matter in a laid-open patent application or patent A document electronically posted on the Internet…
Read MoreHow can an applicant establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2)?
An applicant can establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2) by using an affidavit or declaration. The MPEP states: Thus, if the subject matter in a U.S. patent document upon which the rejection is based is by another who obtained the subject matter from the inventor or a joint…
Read MoreHow can an applicant establish that the AIA 35 U.S.C. 102(b)(2)(C) exception applies?
To establish that the AIA 35 U.S.C. 102(b)(2)(C) exception applies, an applicant can provide a statement. According to MPEP 2154.02(c): “A clear and conspicuous statement by the applicant (or the applicant’s representative of record) that the claimed invention of the application under examination and the subject matter disclosed in the U.S. patent document applied as…
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