What is supplemental examination and how does it relate to ex parte reexamination?

Supplemental examination is a proceeding introduced by the America Invents Act (AIA) that allows patent owners to request the USPTO to consider, reconsider, or correct information relevant to their patent. If a substantial new question of patentability is raised, an ex parte reexamination will be ordered. The MPEP explains: “Section 12 of the AIA added…

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What is the “subject matter” requirement for the AIA 35 U.S.C. 102(b)(2)(B) exception?

The “subject matter” requirement is crucial for applying the AIA 35 U.S.C. 102(b)(2)(B) exception. The MPEP clarifies: “The subject matter in the prior disclosure being relied upon under AIA 35 U.S.C. 102(a) must be the same ‘subject matter’ as the subject matter previously publicly disclosed by the inventor for the exceptions in AIA 35 U.S.C.…

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What is the significance of the “catch-all” nature of the “otherwise available to the public” provision?

The “catch-all” nature of the “otherwise available to the public” provision in AIA 35 U.S.C. 102(a)(1) is significant because it broadens the scope of what can be considered prior art. As stated in MPEP 2152.02(e): “This ‘catch-all’ provision permits decision makers to focus on whether the disclosure was ‘available to the public,’ rather than on…

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What constitutes “secret use” in patent law?

What constitutes “secret use” in patent law? In patent law, “secret use” refers to the use of an invention that is kept confidential and not accessible to the public. The Manual of Patent Examining Procedure (MPEP) 2152.02(c) states: “An inventor’s private use or sale of the invention is not prior art under AIA 35 U.S.C.…

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Can secret commercial activity be considered “on sale” under AIA?

Yes, secret commercial activity can be considered “on sale” under AIA 35 U.S.C. 102(a)(1). The MPEP references the Supreme Court decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., stating: “[T]he Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s…

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What is the role of affidavits or declarations in establishing the grace period inventor-originated disclosure exception?

Affidavits or declarations play a crucial role in establishing the grace period inventor-originated disclosure exception when it’s not apparent from the disclosure itself or the patent application specification. The MPEP states: “The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior…

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