What is the applicability of MPEP 715.01(b) to AIA applications?
MPEP 715.01(b) has limited applicability to applications subject to the America Invents Act (AIA). The section begins with an important editor’s note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). This…
Read MoreWhat are the prior art exceptions under AIA 35 U.S.C. 102(b)(1) and (2)?
The prior art exceptions under AIA 35 U.S.C. 102(b)(1) and (2) provide circumstances where certain disclosures are not considered prior art. These exceptions are: Under 35 U.S.C. 102(b)(1), a disclosure made one year or less before the effective filing date is not prior art if: The disclosure was made by the inventor, joint inventor, or…
Read MoreHow does the AIA affect 37 CFR 1.131 affidavits in patent applications?
How does the AIA affect 37 CFR 1.131 affidavits in patent applications? The America Invents Act (AIA) has significantly impacted the use of 37 CFR 1.131 affidavits in patent applications. According to MPEP 715.01(a): “For applications subject to current 35 U.S.C. 102, affidavits or declarations under 37 CFR 1.131(a) are not available to overcome a…
Read MoreHow does the AIA affect prior art considerations in patent examination?
How does the AIA affect prior art considerations in patent examination? The America Invents Act (AIA) significantly changed prior art considerations in patent examination. According to MPEP 706.02: ‘AIA 35 U.S.C. 102(a)(1) and (a)(2) define prior art that may be used to reject claims of an application.’ Key changes introduced by the AIA include: A…
Read MoreHow does the AIA affect the use of 37 CFR 1.131 affidavits for NAFTA/WTO acts?
How does the AIA affect the use of 37 CFR 1.131 affidavits for NAFTA/WTO acts? The America Invents Act (AIA) has significantly impacted the use of 37 CFR 1.131 affidavits, including those relying on acts in NAFTA/WTO countries. The MPEP 715.07(c) notes: “The provisions of 35 U.S.C. 104, as in effect on March 15, 2013,…
Read MoreHow does the AIA affect the grace period for prior art in patent applications?
The America Invents Act (AIA) introduced significant changes to the grace period for prior art in patent applications. MPEP 715.01(d) explains: ‘For applications subject to current 35 U.S.C. 102, the provisions of 37 CFR 1.130 generally apply for subject matter to which the current 35 U.S.C. 102(a)(1) or 102(a)(2) dates to be one year or…
Read MoreWhat is the grace period for disclosures under AIA 35 U.S.C. 102(b)(1)?
The AIA provides a one-year grace period for certain disclosures made before the effective filing date of a claimed invention. Specifically, 35 U.S.C. 102(b)(1) states: A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A)…
Read MoreHow does the AIA first inventor to file system affect prior art rejections?
How does the AIA first inventor to file system affect prior art rejections? The America Invents Act (AIA) introduced the first inventor to file system, which significantly impacts prior art rejections. According to MPEP 706.02: ‘AIA 35 U.S.C. 102(a)(1) and (a)(2) define the prior art that will preclude the grant of a patent on a…
Read MoreHow does the AIA affect the treatment of common ownership in patent applications?
The America Invents Act (AIA) has significantly changed how common ownership is treated in patent applications. While MPEP 715.01(b) primarily deals with pre-AIA law, it provides guidance on the transition: For applications subject to current 35 U.S.C. 102, see MPEP § 2154.02(c). This reference to MPEP § 2154.02(c) indicates that for AIA applications, different rules…
Read MoreHow does the AIA define ‘disclosure’ in the context of prior art?
The AIA does not explicitly define the term ‘disclosure’. However, the MPEP provides guidance on how the USPTO interprets this term in the context of prior art exceptions. According to the MPEP: The Office is treating the term ‘disclosure’ as a generic expression intended to encompass the documents and activities enumerated in 35 U.S.C. 102(a)…
Read More