How does the effective filing date of a WIPO published application affect its use as prior art?
The effective filing date of a WIPO published application is crucial in determining its use as prior art. MPEP 2154.01(a) states: “The WIPO publication of a PCT international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2) under 35 U.S.C.…
Read MoreWhat is a Continuation-In-Part (CIP) application?
A Continuation-In-Part (CIP) application is a type of patent application that contains a portion or all of the disclosure of an earlier application and adds matter not disclosed in the earlier parent application. The new matter in a CIP application can be claimed, but it may affect the effective filing date of certain claims. According…
Read MoreWhat constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)? A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02: “The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically…
Read MoreHow does the USPTO determine the effective filing date for foreign priority claims?
For U.S. patent documents claiming foreign priority, the USPTO determines the effective filing date based on the description of the subject matter in the foreign application. MPEP 2154.01(b) states: If subject matter of a U.S. patent document under examination is not described in the earliest application to which benefit or priority is claimed, the effective…
Read MoreWhat types of U.S. patent documents are considered prior art under AIA 35 U.S.C. 102(a)(2)?
Under AIA 35 U.S.C. 102(a)(2), three types of U.S. patent documents are considered prior art as of their effective filing date if they name another inventor: U.S. patents U.S. patent application publications World Intellectual Property Organization (WIPO) publications of international applications that designate the United States As stated in the MPEP: “AIA 35 U.S.C. 102(a)(2)…
Read MoreHow does the “time of invention” differ for AIA and pre-AIA applications in equivalence determinations?
The “time of invention” consideration differs for AIA (America Invents Act) and pre-AIA applications in equivalence determinations: For AIA applications: The relevant time is “before the effective filing date of the claimed invention.” For pre-AIA applications: The relevant time is “at the time of the invention.” MPEP 2183 notes: “For applications subject to the first…
Read MoreWhat is the significance of the six-month period between effective filing dates in interference cases?
The six-month period between effective filing dates plays a crucial role in determining how to proceed with potentially interfering applications. According to MPEP 2303.01: “If the applications have their earliest effective filing dates within six months of each other, then an interference may be suggested.“ This six-month window is used as a threshold for deciding…
Read MoreWhat is the scope of prior art available under pre-AIA 35 U.S.C. 102(e)?
Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of certain U.S. patents, patent application publications, or international application publications can be used as prior art against patent claims. As stated in the MPEP: “Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of a U.S. patent, a U.S. patent application publication, or an international application publication…
Read MoreWhat constitutes a “public use” under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), a “public use” that can bar patentability is any use that is available to the public, regardless of geographic location. The MPEP states: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where prior public use or public availability occurs.” This means that public uses anywhere in the…
Read MoreHow can provisional applications be used as prior art under pre-AIA 35 U.S.C. 102(e)?
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states: “Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35…
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