What legislative acts have significantly impacted inter partes reexamination?

Several legislative acts have had significant impacts on inter partes reexamination: The American Inventors Protection Act of 1999 (AIPA): Introduced inter partes reexamination. Public Law 107-273 (2002): Expanded the scope of what qualifies for a substantial new question of patentability and expanded third-party requester’s appeal rights. The Leahy-Smith America Invents Act (AIA) of 2011: Replaced…

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What is the requirement for ‘lack of deceptive intention’ in reissue applications?

For reissue applications filed before September 16, 2012, there was a specific requirement regarding ‘lack of deceptive intention’. The MPEP states: For reissue applications filed prior to September 16, 2012, both pre-AIA 35 U.S.C. 251 and pre-AIA 37 CFR 1.175 require that the reissue oath or declaration must state that the error arose “without any…

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How does the joint research agreement exception apply to prior art under AIA 35 U.S.C. 102(a)(1)?

The joint research agreement exception under AIA 35 U.S.C. 102(b)(2)(C) does not apply to disclosures that qualify as prior art under AIA 35 U.S.C. 102(a)(1). The MPEP clarifies: “The AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the effective…

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How does a joint research agreement affect the AIA first inventor to file provisions?

How does a joint research agreement affect the AIA first inventor to file provisions? A joint research agreement (JRA) can have significant implications for the America Invents Act (AIA) first inventor to file provisions. Specifically: It can help prevent collaborators’ disclosures from being used as prior art against each other. It affects how the USPTO…

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How does joint inventorship affect the “names another inventor” requirement?

In cases of joint inventorship, the “names another inventor” requirement under AIA 35 U.S.C. 102(a)(2) is satisfied even if only one joint inventor is different between the prior art document and the application under examination. MPEP 2154.01(c) clarifies: “Thus, in the case of joint inventors, only one joint inventor needs to be different for the…

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