How does the common ownership exception work under AIA 35 U.S.C. 102(b)(2)(C)?
The common ownership exception under AIA 35 U.S.C. 102(b)(2)(C) provides a way to overcome certain prior art rejections. According to MPEP 2154.02(c): “AIA 35 U.S.C. 102(b)(2)(C) provides a third exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2). The exception of AIA 35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent,…
Read MoreDoes the AIA 35 U.S.C. 102(b)(2)(B) exception require a comparison with the claimed invention?
No, the AIA 35 U.S.C. 102(b)(2)(B) exception does not require a comparison with the claimed invention. The MPEP clearly states: “AIA 35 U.S.C. 102(b)(2)(B) does not discuss ‘the claimed invention’ with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent…
Read MoreHow does the best mode requirement apply in reexamination proceedings?
How does the best mode requirement apply in reexamination proceedings? The application of the best mode requirement in reexamination proceedings is an important consideration. MPEP 2280 provides guidance on this matter: “The best mode requirement is not applicable to reexamination proceedings filed on applications with an effective filing date on or after September 16, 2012,…
Read MoreWhat applications are subject to MPEP 2155.04?
MPEP 2155.04 is specifically applicable to patent applications subject to examination under the first inventor to file (FITF) provisions of the America Invents Act (AIA). The section begins with an editor’s note that states: “This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the…
Read MoreWhen is a disclosure considered an apparent inventor-originated disclosure?
A disclosure is considered an apparent inventor-originated disclosure when certain conditions are met. According to MPEP 2153.01(a): “A disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) if it is apparent from the disclosure itself that it is an inventor-originated disclosure. Specifically, Office personnel may not apply a disclosure as prior art under AIA…
Read MoreHow does the America Invents Act (AIA) relate to derivation proceedings?
The America Invents Act (AIA) plays a crucial role in the context of derivation proceedings. According to MPEP 2310: “Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon that are subject to first-inventor-to-file provisions of the America Invents Act (AIA).” This means that: Derivation proceedings are a direct result of…
Read MoreHow did the America Invents Act (AIA) affect ex parte reexamination?
The Leahy-Smith America Invents Act (AIA), enacted on September 16, 2012, made several significant changes to ex parte reexamination: Expanded the scope of citable information to include patent owner statements filed in federal court or USPTO proceedings. Introduced estoppel provisions related to inter partes review and post-grant review. Established a first-inventor-to-file prior art regime, replacing…
Read MoreWhat is the significance of the America Invents Act (AIA) in determining which version of 35 U.S.C. 102 to apply?
The America Invents Act (AIA) introduced significant changes to U.S. patent law, particularly regarding the application of 35 U.S.C. 102. According to MPEP 2139.02: “The America Invents Act (AIA) revised 35 U.S.C. 102 and thereby, the provisions that govern which version of 35 U.S.C. 102 to apply to any particular application or patent.” This means…
Read MoreHow did the America Invents Act (AIA) affect the best mode requirement?
The Leahy-Smith America Invents Act (AIA) made significant changes to the best mode requirement, as explained in MPEP 2165: It did not eliminate the requirement for disclosing the best mode in patent applications. It amended 35 U.S.C. 282 to prevent the failure to disclose the best mode from being a basis for invalidating or rendering…
Read MoreHow does the treatment of WIPO published applications differ under AIA compared to pre-AIA?
The treatment of WIPO published applications as prior art differs significantly under the AIA compared to pre-AIA law: Under AIA: All WIPO published applications designating the U.S. are treated as prior art, regardless of filing date, language, or national stage entry. Under pre-AIA: WIPO published applications had more restrictions to be considered prior art. The…
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