How has the AIA changed the definition of prior art compared to pre-AIA law?
The America Invents Act (AIA) introduced several significant changes to the definition of prior art compared to pre-AIA law: Effective filing date: The MPEP states, “the availability of a U.S. patent document as prior art to a claimed invention is measured from the effective filing date of the claimed invention as defined in 35 U.S.C.…
Read MoreWhat are the key changes to 35 U.S.C. 102 and 103 introduced by the Leahy-Smith America Invents Act (AIA)?
The Leahy-Smith America Invents Act (AIA) revised 35 U.S.C. 102 and thereby, the standard to determine what prior art is available during examination of an application. As stated in the MPEP, “The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013.” This means…
Read MoreWhat is the impact of AIA 35 U.S.C. 103 on the scope of prior art?
AIA 35 U.S.C. 103 has significantly expanded the scope of prior art that can be used in obviousness rejections. The MPEP 2158 explains: “AIA 35 U.S.C. 103 differs from pre-AIA 35 U.S.C. 103(a) in that AIA 35 U.S.C. 103 determines obviousness as of the effective filing date of the claimed invention, rather than as of…
Read MoreHow does AIA 35 U.S.C. 103 define prior art for obviousness determinations?
AIA 35 U.S.C. 103 relies on AIA 35 U.S.C. 102(a) to define prior art for both novelty and obviousness determinations. The MPEP states: “AIA 35 U.S.C. 102(a) defines what is prior art both for purposes of novelty under AIA 35 U.S.C. 102 as well as for purposes of obviousness under AIA 35 U.S.C. 103.“ This…
Read MoreHow does AIA 35 U.S.C. 103 affect the determination of obviousness?
AIA 35 U.S.C. 103 has modified the determination of obviousness in patent examination. The key changes include: Elimination of pre-AIA 35 U.S.C. 103(c), which provided a safe harbor for commonly owned prior art or prior art resulting from a joint research agreement. Introduction of a new prior art exception under AIA 35 U.S.C. 102(b)(2)(C) for…
Read MoreHow does AIA 35 U.S.C. 103 treat commonly owned prior art?
AIA 35 U.S.C. 103 has changed the treatment of commonly owned prior art in obviousness determinations. The MPEP 2158 states: “The AIA eliminated the pre-AIA 35 U.S.C. 103(c) safe harbor for subject matter commonly owned or subject to an obligation of assignment to the same person at the time the claimed invention was made.” Instead,…
Read MoreWhat changes did AIA 35 U.S.C. 103 make to pre-AIA 35 U.S.C. 103(b) and 103(c)?
AIA 35 U.S.C. 103 made significant changes to pre-AIA 35 U.S.C. 103(b) and 103(c): Pre-AIA 35 U.S.C. 103(b): This provision, which applied to biotechnological inventions, has been eliminated in AIA 35 U.S.C. 103. Pre-AIA 35 U.S.C. 103(c): This has been eliminated, but similar provisions have been introduced in AIA 35 U.S.C. 102(b)(2)(C) and 102(c). The…
Read MoreWhat is the difference between AIA 35 U.S.C. 102(d)(1) and 102(d)(2) in determining effective filing dates?
AIA 35 U.S.C. 102(d)(1) and 102(d)(2) provide different bases for determining effective filing dates: AIA 35 U.S.C. 102(d)(1): Uses the actual filing date of the patent or published application. AIA 35 U.S.C. 102(d)(2): Uses the earliest filing date for which a benefit is sought (e.g., priority or benefit claims). The MPEP 2154.01(b) states: “AIA 35…
Read MoreHow does AIA 35 U.S.C. 102(d) determine the effective filing date for subject matter in foreign priority applications?
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows: The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement). The foreign priority application must be entitled to a right of priority under 35…
Read MoreHow does the AIA 35 U.S.C. 102(b)(2)(B) exception differ from the AIA 35 U.S.C. 102(b)(1)(B) exception?
While both exceptions relate to prior public disclosures by inventors, there are key differences: AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date). AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior…
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