How can I overcome a rejection based on 35 U.S.C. 102 prior art?
There are several ways to overcome a rejection based on 35 U.S.C. 102 prior art. The MPEP provides guidance on this: In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over…
Read MoreWhat is the ‘otherwise available to the public’ category in AIA 35 U.S.C. 102(a)(1)?
The ‘otherwise available to the public’ category is a new addition to the definition of prior art under AIA 35 U.S.C. 102(a)(1). This category serves as a catch-all provision to include forms of public disclosure that may not fit neatly into the other specified categories. The MPEP states: “Finally, a catch-all ‘otherwise available to the…
Read MoreWhat does “otherwise available to the public” mean in patent law?
“Otherwise available to the public” is a catch-all provision in AIA 35 U.S.C. 102(a)(1) that defines a new category of potential prior art. According to MPEP 2152.02(e), this provision “permits decision makers to focus on whether the disclosure was ‘available to the public,’ rather than on the means by which the claimed invention became available…
Read MoreWhat is considered “otherwise available to the public” under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), “otherwise available to the public” is a catch-all provision that encompasses disclosures made available to the public by any means. The MPEP 2152.02(e) states: “The catch-all provision of AIA 35 U.S.C. 102(a)(1), ‘otherwise available to the public,’ indicates that the statute does not limit prior art to the enumerated categories…
Read MoreHow does the “otherwise available to the public” provision differ from pre-AIA prior art categories?
The “otherwise available to the public” provision in AIA 35 U.S.C. 102(a)(1) represents a significant change from pre-AIA law. According to MPEP 2152.02(e): “AIA 35 U.S.C. 102(a)(1) provides a ‘catch-all’ provision, which defines a new additional category of potential prior art not provided for in pre-AIA 35 U.S.C. 102.” This new provision allows for a…
Read MoreWhat is the one-year grace period for inventor-originated disclosures?
The one-year grace period for inventor-originated disclosures is a provision in the America Invents Act (AIA) that allows inventors to disclose their inventions up to one year before filing a patent application without those disclosures being considered prior art against their own applications. MPEP 2153.01(a) states: “AIA 35 U.S.C. 102(b)(1)(A) first provides that a disclosure…
Read MoreHow does the AIA define “on sale” for prior art purposes?
The AIA maintains the “on sale” provision as a category of prior art under 35 U.S.C. 102(a)(1). According to MPEP 2152.02(d): “The “on sale” provision of AIA 35 U.S.C. 102(a)(1) is triggered by a sale or offer for sale of the claimed invention. The phrase “on sale” in AIA 35 U.S.C. 102(a)(1) is treated as…
Read MoreWhat constitutes “on sale” under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), “on sale” is interpreted similarly to its meaning in pre-AIA 35 U.S.C. 102(b). The MPEP states: “The phrase ‘on sale’ in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as ‘on sale’ in pre-AIA 35 U.S.C. 102(b).” This means that commercial sales or offers for sale, not…
Read MoreHow does the AIA treat “on sale” activities as prior art?
The AIA’s treatment of “on sale” activities as prior art under 35 U.S.C. 102(a)(1) is similar to pre-AIA law, but with some important changes. The MPEP provides guidance on this topic: “The phrase ‘on sale’ in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as ‘on sale’ in pre-AIA 35 U.S.C. 102(b).”…
Read MoreCan a non-sale commercial transaction be considered prior art under AIA?
Yes, under the AIA, a non-sale commercial transaction can potentially be considered prior art. The MPEP 2152.02(e) explicitly mentions: “[A] commercial transaction that does not constitute a sale under the Uniform Commercial Code (see, e.g., Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 59 USPQ2d 1121 (Fed. Cir. 2001) and MPEP § 2133.03(e)(1)).…
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