What are the requirements for a U.S. patent document to claim priority or benefit under AIA 35 U.S.C. 102(d)?

For a U.S. patent document to be “entitled to claim” priority or benefit of a prior-filed application under AIA 35 U.S.C. 102(d), it must meet three ministerial requirements: Contain a priority or benefit claim to the prior-filed application Be filed within the applicable filing period requirement Have a common inventor or be by the same…

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How does the prior art regime affect reexamination proceedings?

The prior art regime applicable to a reexamination proceeding generally depends on the filing date of the patent application. The MPEP states: “The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in the reexamination of the…

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What types of documents qualify as prior art under AIA 35 U.S.C. 102(a)(2)?

Under AIA 35 U.S.C. 102(a)(2), three types of patent documents qualify as prior art as of their effective filing date, provided they name another inventor: U.S. patents U.S. patent application publications Certain WIPO published applications As stated in the MPEP, These documents are referred to collectively as “U.S. patent documents.” It’s important to note that…

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What is the difference between “described in a printed publication” under AIA and pre-AIA law?

The interpretation of “described in a printed publication” remains largely the same under AIA 35 U.S.C. 102(a)(1) as it was under pre-AIA 35 U.S.C. 102. The key requirements for anticipation by a printed publication are: The reference must disclose all elements of the claimed invention The elements must be arranged as in the claim The…

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What constitutes a “printed publication” under AIA 35 U.S.C. 102(a)(1)?

Under AIA 35 U.S.C. 102(a)(1), a printed publication can include patents, published patent applications, or other printed documents. The MPEP states that “If a claimed invention is described in a patent, published patent application, or printed publication, such a document may be available as prior art under AIA 35 U.S.C. 102(a)(1).” This means that any…

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How do the requirements for patent specifications differ between pre-AIA and AIA applications?

The requirements for patent specifications under 35 U.S.C. 112 are similar for both pre-AIA (applications filed before September 16, 2012) and AIA (applications filed on or after September 16, 2012) applications, but there are some differences in the language and structure of the statute. For AIA applications, 35 U.S.C. 112(a) states: “The specification shall contain…

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