What are the requirements for naming inventors in a patent application under the AIA?
Under the America Invents Act (AIA), the naming of the actual inventor or joint inventors of the claimed subject matter is still required. As stated in MPEP 2157: “The patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter. See 35 U.S.C. 115(a) (‘[a]n application for patent…
Read MoreHow does the AIA affect the interpretation of public use and on-sale bar?
The America Invents Act (AIA) has introduced changes to the interpretation of public use and on-sale bar. The MPEP 2133.03(e)(2) notes: “This MPEP section may be 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).” For a detailed discussion…
Read MoreHow did the America Invents Act (AIA) affect prior art citations in inter partes reexamination?
The Leahy-Smith America Invents Act (AIA) introduced new provisions for submitting information in patent proceedings, but it did not significantly alter the process for prior art citations in inter partes reexamination. According to MPEP 2602: “The Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, enacted September 16, 2011, provided, under 35…
Read MoreWhat is the significance of the America Invents Act (AIA) in relation to pre-AIA 35 U.S.C. 102(b)?
The America Invents Act (AIA) brought significant changes to U.S. patent law, particularly in relation to prior art and the determination of patentability. The MPEP section on pre-AIA 35 U.S.C. 102(b) begins with an important note: “[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file…
Read MoreHow does the America Invents Act (AIA) affect the “invention made in this country” requirement?
The America Invents Act (AIA) significantly changed the U.S. patent system, including the relevance of where an invention was made. The MPEP 2138.02 notes: “This MPEP section has limited applicability 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).” This…
Read MoreHow does the AIA affect the treatment of foreign priority claims in determining prior art dates?
The AIA (America Invents Act) has significantly changed the treatment of foreign priority claims in determining prior art dates. Under the AIA: Foreign priority claims can now establish an earlier effective filing date for prior art purposes. This applies to both U.S. and foreign applicants. The subject matter must be adequately supported in the priority…
Read MoreHow does the AIA affect experimental use considerations?
The America Invents Act (AIA) has introduced changes that affect how experimental use is considered in patent law. The MPEP section on experimental use includes an editor’s note stating: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in…
Read MoreHow does the America Invents Act (AIA) affect the interpretation of experimental use?
The America Invents Act (AIA) has implications for how experimental use is interpreted in patent law. The MPEP 2133.03(e)(4) notes: “[This MPEP section may be 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 et…
Read MoreHow does the AIA affect the relevant time for determining enabling prior art?
The America Invents Act (AIA) has changed the relevant time for determining enabling prior art. As noted in MPEP 2121.02: “For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is ‘before the effective filing date of the claimed invention’. For applications subject to pre-AIA 35 U.S.C. 102,…
Read MoreHow does the AIA affect the critical reference date?
The America Invents Act (AIA) significantly changed the determination of the critical reference date for U.S. patents and patent application publications. MPEP 2136.03 explains: “AIA 35 U.S.C. 102(d) provides that if the U.S. patent, U.S. patent application publication, or WIPO published application names another inventor and was effectively filed before the effective filing date of…
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