How does pre-AIA 35 U.S.C. 102(g) interact with pre-AIA 35 U.S.C. 103?
Pre-AIA 35 U.S.C. 102(g) can interact with pre-AIA 35 U.S.C. 103 in patent examinations. The MPEP states: In addition, subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(g) may also be the basis for an ex parte rejection under pre-AIA 35 U.S.C. 103. This means that an invention that qualifies as prior…
Read MoreHow does pre-AIA 35 U.S.C. 102(f) interact with pre-AIA 35 U.S.C. 103?
Pre-AIA 35 U.S.C. 102(f) can interact with pre-AIA 35 U.S.C. 103 in certain situations. The MPEP explains that subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(f) can be used as a basis for an ex parte rejection under pre-AIA 35 U.S.C. 103. However, there’s an important exception to this rule. The…
Read MoreWhat are the main ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection?
There are several ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection, as outlined in MPEP 2152.06: Submitting a benefit claim under 35 U.S.C. 120 or 119(e) Submitting a claim to priority under 35 U.S.C. 119(a)-(d) Filing an affidavit or declaration under 37 CFR 1.130 Establishing common ownership or evidence of a Joint Research…
Read MoreHow does the Joint Research Agreement affect prior art under AIA?
How does the Joint Research Agreement affect prior art under AIA? The Joint Research Agreement (JRA) plays a significant role in determining prior art under the AIA. According to MPEP 2154.02(c), subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of…
Read MoreWhat are the exceptions to prior art under 35 U.S.C. 102(b)(2)?
35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions: 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application…
Read MoreWhat are the exceptions to 35 U.S.C. 102(a)(1) and 102(a)(2) rejections?
What are the exceptions to 35 U.S.C. 102(a)(1) and 102(a)(2) rejections? There are several exceptions to 35 U.S.C. 102(a)(1) and 102(a)(2) rejections, which are outlined in 35 U.S.C. 102(b)(1) and 102(b)(2). These exceptions include: Grace period disclosures: Disclosures made by the inventor or joint inventor within one year of the effective filing date. Derived disclosures:…
Read MoreAre there any exceptions to prior art under AIA 35 U.S.C. 102(a)(2)?
Yes, there are exceptions to prior art under AIA 35 U.S.C. 102(a)(2). These exceptions are outlined in 35 U.S.C. 102(b)(2). The MPEP section 2154 states: “See MPEP § 2154.02 et seq. for prior art exceptions under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2).“ The exceptions generally fall into three categories: Disclosures made 1 year…
Read MoreHow can an applicant establish that the AIA 35 U.S.C. 102(b)(2)(C) exception applies?
To establish that the AIA 35 U.S.C. 102(b)(2)(C) exception applies, an applicant can provide a statement. According to MPEP 2154.02(c): “A clear and conspicuous statement by the applicant (or the applicant’s representative of record) that the claimed invention of the application under examination and the subject matter disclosed in the U.S. patent document applied as…
Read MoreHow can an applicant establish common ownership under Pre-AIA 35 U.S.C. 103(c)?
How can an applicant establish common ownership under Pre-AIA 35 U.S.C. 103(c)? To establish common ownership under Pre-AIA 35 U.S.C. 103(c), an applicant must provide evidence or a statement to show that the claimed invention and the prior art reference were owned by the same person or subject to an obligation of assignment to the…
Read MoreHow can an applicant establish common ownership to disqualify prior art under pre-AIA 35 U.S.C. 103(c)?
An applicant can establish common ownership to disqualify prior art under pre-AIA 35 U.S.C. 103(c) by submitting a clear and conspicuous statement that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. This statement must be signed in…
Read More