How does the America Invents Act (AIA) affect the interpretation of commercial exploitation?
The America Invents Act (AIA) has introduced changes to how commercial exploitation is interpreted in patent law. The MPEP notes: “This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note).” For applications subject to AIA…
Read MoreHow does the America Invents Act (AIA) affect the best mode requirement?
How does the America Invents Act (AIA) affect the best mode requirement? The America Invents Act (AIA) made significant changes to U.S. patent law, including modifications to the best mode requirement. According to MPEP 2165.01: “Section 15 of the Leahy-Smith America Invents Act (AIA) did not eliminate the requirement for a best mode disclosure as…
Read MoreHow does the America Invents Act (AIA) affect WIPO published applications as prior art?
The America Invents Act (AIA) significantly changed how WIPO published applications are treated as prior art. According to MPEP 2154.01(a): “AIA 35 U.S.C. 102(a)(2) explicitly references U.S. patents, U.S. patent application publications, and WIPO published applications as potential prior art documents.” This means that under the AIA, WIPO published applications are now explicitly recognized as…
Read MoreHow does the AIA affect the interpretation of the on-sale bar?
The America Invents Act (AIA) maintained the “on sale” language from the pre-AIA statute, and the courts have interpreted it as having the same meaning. The MPEP states: It is noted that AIA 35 U.S.C. 102(a)(1) uses the same “on sale” term as pre-AIA 35 U.S.C. 102(b) and is treated as having the same meaning.…
Read MoreHow does the America Invents Act (AIA) affect the applicability of pre-AIA 35 U.S.C. 102(g)?
The America Invents Act (AIA) significantly changed the U.S. patent system, transitioning from a first-to-invent to a first-inventor-to-file system. This change has important implications for the applicability of pre-AIA 35 U.S.C. 102(g). The MPEP provides guidance on this matter: This MPEP section has limited applicability to applications subject to examination under the first inventor to…
Read MoreHow does the AIA (America Invents Act) affect the treatment of CIP applications?
The America Invents Act (AIA) significantly changed the treatment of Continuation-In-Part (CIP) applications for patents filed on or after March 16, 2013. The MPEP 2133.01 notes: “[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35…
Read MoreHow does 37 CFR 1.130 help overcome prior art rejections?
37 CFR 1.130 provides a mechanism for applicants to overcome prior art rejections by establishing that certain disclosures should not be considered prior art under the America Invents Act (AIA). It helps in two primary ways: Attribution (37 CFR 1.130(a)): By showing that the disclosure was made by the inventor or joint inventor, or that…
Read MoreHow does 37 CFR 1.130 relate to the America Invents Act (AIA)?
37 CFR 1.130 is directly related to the America Invents Act (AIA) and is only applicable to patent applications subject to the first inventor to file (FITF) provisions of the AIA. It provides a mechanism for applicants to overcome prior art rejections under the new AIA provisions. Specifically, 37 CFR 1.130 allows applicants to establish…
Read MoreWhen was the Statutory Invention Registration (SIR) provision repealed?
The Statutory Invention Registration (SIR) provision was repealed on March 16, 2013, as part of the America Invents Act. According to MPEP 1101: “The provisions of pre-AIA 35 U.S.C. 157 were repealed on March 16, 2013, effective for any request filed on or after that date. See §3(e) of the America Invents Act.” This means…
Read MoreWho can be an applicant for a U.S. National Stage Application?
For U.S. national stage applications with an international filing date on or after September 16, 2012, the applicant can be: The inventor(s) The legal representative of a deceased or legally incapacitated inventor The assignee The obligated assignee (i.e., a person to whom the inventor is under an obligation to assign the invention) A person who…
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