Can an application change from pre-AIA to AIA status?
Yes, an application can change from pre-AIA to AIA status under certain conditions. According to MPEP 2159.02: “If an application filed on or after March 16, 2013, that did not previously contain any claim to a claimed invention having an effective filing date on or after March 16, 2013, (a pre-AIA application) is amended to…
Read MoreHow do pre-AIA notions of obviousness apply under the AIA?
Generally, pre-AIA notions of obviousness continue to apply under the AIA, with some exceptions. The MPEP states: “Generally speaking, and with the exceptions noted herein, pre-AIA notions of obviousness continue to apply under the AIA.“ This means that many of the established principles and case law regarding obviousness determinations remain relevant under the AIA. However,…
Read MoreCan an application be subject to both pre-AIA and AIA provisions simultaneously?
Yes, an application can be subject to both pre-AIA and AIA provisions simultaneously, but with specific limitations. The MPEP 2159.03 states: “Thus, if an application contains, or contained at any time, any claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, any claim having…
Read MoreWhat is pre-AIA 35 U.S.C. 102(f) and when does it apply?
Pre-AIA 35 U.S.C. 102(f) is a provision that bars the issuance of a patent where an applicant did not invent the subject matter being claimed. It applies to patent applications that are not subject to the first inventor to file (FITF) provisions of the America Invents Act (AIA). According to the MPEP, Pre-AIA 35 U.S.C.…
Read MoreDoes a PCT application need to enter the national stage in the U.S. to be prior art under AIA?
No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states: Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of…
Read MoreHow does the entry into the national stage affect the applicable patent laws for PCT applications?
The entry into the national stage does not change the applicable patent laws for PCT applications. According to MPEP 2159.01: “Similarly, a PCT application filed under 35 U.S.C. 363 before March 16, 2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage under 35 U.S.C. 371…
Read MoreWhat is considered “patented” under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), “patented” refers to a prior patent that discloses the claimed invention before the effective filing date of the current application. The MPEP states: “AIA 35 U.S.C. 102(a)(1) indicates that a prior patent of a claimed invention will preclude the grant of a subsequent patent on the claimed invention.” This means…
Read MoreWhen does a patent become prior art under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), a patent generally becomes prior art on its grant date. The MPEP states: “The effective date of the patent for purposes of determining whether the patent qualifies as prior art under AIA 35 U.S.C. 102(a)(1) is the grant date of the patent.” However, there’s an exception for secret patents: “There…
Read MoreWhat is the significance of the patent grant date for prior art under AIA?
What is the significance of the patent grant date for prior art under AIA? Under the America Invents Act (AIA), the patent grant date is crucial for determining prior art status. According to MPEP 2152.02(a), “Once a patent is granted, the right to exclude granted by a patent no longer requires that a patent application…
Read MoreWhat is the role of the patent examiner in investigating potential public uses under the AIA?
Under the AIA, patent examiners play an important role in investigating potential public uses that could affect the patentability of an invention. The MPEP provides guidance on this matter: “[O]nce an examiner becomes aware that a claimed invention has been the subject of a potentially public use, the examiner should require the applicant to provide…
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