How is the reasonable expectation of success determined in patent examination?
The reasonable expectation of success in patent examination is determined based on the knowledge available at the relevant time. For pre-AIA cases, this is at the time the invention was made. For AIA cases, it’s before the effective filing date of the claimed invention. According to MPEP 2143.02: “Whether an art is predictable or whether…
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 do I determine which version of 35 U.S.C. 102 applies to my patent application?
To determine which version of 35 U.S.C. 102 applies to your patent application, you need to consider the filing date of your application. The MPEP provides clear guidance: Form paragraph 7.03.aia or 7.03.fti should be used in an Office action to indicate whether the application is being examined under the first inventor to file provisions…
Read MoreHow do I determine if my patent application is subject to pre-AIA or AIA provisions?
To determine whether your application is subject to pre-AIA or AIA provisions, consider the following guidelines from the MPEP: Applications filed before March 16, 2013, are governed by pre-AIA 35 U.S.C. 102 and 103. Applications filed on or after March 16, 2013, are subject to AIA provisions, unless they have never contained a claim with…
Read MoreHow does the “described” requirement differ between AIA and pre-AIA patent law?
The MPEP clarifies that the “described” requirement remains essentially unchanged between pre-AIA and AIA patent law. It states: “The Office does not view the AIA as changing the extent to which a claimed invention must be described for a prior art document to anticipate the claimed invention under 35 U.S.C. 102.” This means that the…
Read MoreWhat is the difference between derivation proceedings and interference proceedings?
Derivation proceedings and interference proceedings are both related to patent disputes, but they serve different purposes and apply to different patent regimes. The key differences are: Applicable Law: Derivation proceedings are part of the America Invents Act (AIA) and apply to patents under the first-inventor-to-file system. Interference proceedings were part of the pre-AIA system. Purpose:…
Read MoreWhat is the current status of inter partes reexamination requests?
As of September 16, 2012, no new requests for inter partes reexamination can be filed. The Manual of Patent Examining Procedure (MPEP) Section 2614 states: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change was part of the America Invents Act (AIA) which replaced inter partes reexamination…
Read MoreHow can inventorship errors be corrected in patent applications?
For applications filed on or after September 16, 2012, inventorship errors can be corrected without disclosing the circumstances of the error. This is based on 35 U.S.C. 116(c), which states: “Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in…
Read MoreWhat is the difference between the exceptions in 35 U.S.C. 102(b)(1) and 102(b)(2)?
The exceptions in 35 U.S.C. 102(b)(1) and 102(b)(2) serve different purposes and apply to different types of prior art. Here’s a comparison: 35 U.S.C. 102(b)(1) Exceptions: Apply to disclosures that would be prior art under 35 U.S.C. 102(a)(1) Cover public disclosures made within one year before the effective filing date Include exceptions for inventor’s own…
Read MoreHow does common ownership affect prior art under 35 U.S.C. 102(b)(2)(C)?
Common ownership can significantly affect prior art considerations under 35 U.S.C. 102(b)(2)(C). The MPEP states: “35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the…
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