Does filing a request for continued examination (RCE) change the applicable patent laws?
No, filing a request for continued examination (RCE) does not change the applicable patent laws for an application. The MPEP 2159.01 clearly states: “Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application. Accordingly, even if a…
Read MoreDoes filing a request for continued examination (RCE) change an application’s status under pre-AIA or AIA rules?
No, filing a request for continued examination (RCE) does not change an application’s status under pre-AIA or AIA rules. The MPEP clearly states: Accordingly, such an application remains subject to pre-AIA 35 U.S.C. 102 and 103 even if a request for continued examination under 37 CFR 1.114 is filed on or after March 16, 2013,…
Read MoreWhat is the purpose of a derivation proceeding?
The purpose of a derivation proceeding is twofold, as outlined in MPEP 2310: “A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier…
Read MoreWhat is the purpose of an affidavit or declaration under 37 CFR 1.130(b)?
An affidavit or declaration under 37 CFR 1.130(b), also known as an affidavit or declaration of prior public disclosure, serves to except an intervening disclosure as prior art. It can be used when: The subject matter disclosed had been publicly disclosed by the inventor or joint inventor before the intervening disclosure was made or effectively…
Read MoreWhat is the purpose of 37 CFR 1.130 in patent examination?
37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art under the America Invents Act (AIA). Specifically, it allows applicants to overcome prior art rejections by showing that: The disclosure was made by the inventor or joint inventor (37 CFR 1.130(a)) The subject matter…
Read MoreWhat is the “public use” grace period under the AIA?
The America Invents Act (AIA) introduced a grace period for public use disclosures. According to MPEP 2152.02(c): “Under pre-AIA 35 U.S.C. 102(b), an applicant was barred from receiving a patent if the invention claimed in the application was in public use in this country more than one year prior to the date of the application…
Read MoreWhat constitutes a “public use” under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), a “public use” that can bar patentability is any use that is available to the public, regardless of geographic location. The MPEP states: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where prior public use or public availability occurs.” This means that public uses anywhere in the…
Read MoreWhat is the role of the Patent Trial and Appeal Board (PTAB) in derivation proceedings?
The Patent Trial and Appeal Board (PTAB) plays a central role in derivation proceedings. As stated in MPEP 2310: “A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the…
Read MoreWhen can a provisional rejection be made under AIA 35 U.S.C. 102(a)(2)?
A provisional rejection under AIA 35 U.S.C. 102(a)(2) can be made in certain circumstances involving copending U.S. patent applications. The MPEP outlines two main scenarios: Applications with common inventors, applicants, or assignees: A provisional rejection can be made if: The applications have at least one common inventor, common applicant, or are commonly assigned. The first…
Read MoreHow can an inventor prove a prior public disclosure for the AIA 35 U.S.C. 102(b)(2)(B) exception?
To prove a prior public disclosure for the AIA 35 U.S.C. 102(b)(2)(B) exception, inventors can use affidavits or declarations. The MPEP provides guidance on this: “MPEP § 2155.02 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by the inventor or a joint inventor, and MPEP §…
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