How does the first-to-file system affect design patent applications?
The first-to-file system, implemented by the America Invents Act (AIA), affects design patent applications in several ways: Priority is given to the first inventor to file a patent application, regardless of the date of invention. It eliminates interference proceedings for design patents filed on or after March 16, 2013. It introduces derivation proceedings to determine…
Read MoreHow does the America Invents Act (AIA) affect who can be an applicant in U.S. National Stage Applications?
The America Invents Act (AIA) significantly expanded who can be an applicant in patent applications, including U.S. National Stage Applications. This change applies to applications with an international filing date on or after September 16, 2012. The MPEP states: “The America Invents Act (AIA) amended 35 U.S.C. 118 to expand who may be an applicant…
Read MoreWhat changes did the America Invents Act (AIA) bring to the patent appeal process?
The America Invents Act (AIA) introduced significant changes to the patent appeal process. MPEP 1201 notes: “Unless otherwise noted, the discussion of the ex parte appeal practice before the Board in this chapter is primarily directed to appeals wherein the notice of appeal was filed on or after January 23, 2012, or to proceedings commenced…
Read MoreWhat is the difference between AIA and pre-AIA patent laws regarding prior art?
The America Invents Act (AIA) significantly changed the definition and scope of prior art compared to pre-AIA laws. Key differences include: AIA uses a first-inventor-to-file system, while pre-AIA used a first-to-invent system AIA expands the geographical scope of prior art AIA eliminates the one-year grace period for public use and on-sale activities outside the U.S.…
Read MoreHow does the America Invents Act (AIA) affect the examination of reissue applications?
The America Invents Act (AIA) introduced changes to the determination of prior art for patent applications. For reissue applications, the effect depends on the effective filing date of the claims. The MPEP 1440 explains: “The Leahy-Smith America Invents Act (AIA) revised 35 U.S.C. 102 and thereby, the standard to determine what prior art is available…
Read MoreWhat is the impact of the AIA on design patent anticipation?
The America Invents Act (AIA) significantly changed the prior art provisions for design patent applications. For applications filed on or after March 16, 2013, the AIA’s first-inventor-to-file system applies. The MPEP provides specific form paragraphs for AIA applications, such as: The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by [1] because the…
Read MoreHow does the America Invents Act (AIA) affect the determination of the 371(c) date?
The America Invents Act (AIA) has impacted the determination of the 371(c) date in national stage applications. The MPEP states: “Because of changes implemented pursuant to the America Invents Act (AIA), and in particular, the ability to postpone the submission of the oath or declaration required under 35 U.S.C. 371(c)(4) under certain conditions, the requirements…
Read MoreWhen does the 35 U.S.C. 102(b)(2)(C) exception not apply?
The 35 U.S.C. 102(b)(2)(C) exception does not apply in certain situations. According to the MPEP: The 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under 35 U.S.C. 102(a)(1) (disclosures publicly made before the effective filing date of the claimed invention). Additionally, this exception: Is not effective to remove…
Read MoreWhat is the effect of a Joint Research Agreement on patent rejections?
A Joint Research Agreement (JRA) can affect patent rejections in the following ways: It can except certain subject matter as prior art under 35 U.S.C. 102(b)(2)(C) and 102(c) for applications subject to AIA. It can disqualify certain references as prior art under pre-AIA 35 U.S.C. 103(c). When a rejection is overcome due to a JRA,…
Read MoreWhat are the requirements for invoking the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement?
What are the requirements for invoking the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement? To invoke the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement, specific requirements must be met. According to MPEP 717.02(b), the following conditions apply: Timing of the agreement: The joint research agreement must have…
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