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…
Read MoreHow 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…
Read MoreWhat are the prior art exceptions under 35 U.S.C. 102(b)(1)?
The prior art exceptions under 35 U.S.C. 102(b)(1) are provisions that exclude certain disclosures from being considered as prior art under the America Invents Act (AIA). These exceptions apply to the first inventor to file (FITF) provisions of the AIA. The MPEP states: See MPEP § 2153.01 for prior art exceptions based on grace period…
Read MoreWhat is the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(B)?
The Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(B) provides an exception to prior art under AIA 35 U.S.C. 102(a)(2). This exception applies to subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or someone who obtained the subject matter directly or…
Read MoreWhat 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…
Read MoreWhat 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…
Read MoreWhat 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…
Read MoreWhat is the difference between pre-AIA and current 37 CFR 1.56?
The main difference between the pre-AIA (America Invents Act) and current versions of 37 CFR 1.56 lies in the applicability of paragraph (c)(3). The MPEP notes: “[Editor Note: Para. (c)(3) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012.]” This means that for patent…
Read MoreHow 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…
Read MoreWhat determines if an application is subject to pre-AIA or AIA patent laws?
The determining factor for whether an application is subject to pre-AIA or AIA patent laws is its filing date. Applications filed before March 16, 2013, are governed by pre-AIA 35 U.S.C. 102 and 103. As stated in MPEP 2159.01: “The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any…
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