How has the AIA changed the definition of prior art compared to pre-AIA law?
The America Invents Act (AIA) introduced several significant changes to the definition of prior art compared to pre-AIA law: Effective filing date: The MPEP states, “the availability of a U.S. patent document as prior art to a claimed invention is measured from the effective filing date of the claimed invention as defined in 35 U.S.C.…
Read MoreWhat is the difference between AIA 35 U.S.C. 102(d)(1) and 102(d)(2) in determining effective filing dates?
AIA 35 U.S.C. 102(d)(1) and 102(d)(2) provide different bases for determining effective filing dates: AIA 35 U.S.C. 102(d)(1): Uses the actual filing date of the patent or published application. AIA 35 U.S.C. 102(d)(2): Uses the earliest filing date for which a benefit is sought (e.g., priority or benefit claims). The MPEP 2154.01(b) states: “AIA 35…
Read MoreHow does AIA 35 U.S.C. 102(d) determine the effective filing date for subject matter in foreign priority applications?
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows: The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement). The foreign priority application must be entitled to a right of priority under 35…
Read MoreWhat determines if an application is subject to AIA 35 U.S.C. 102 and 103?
An application is subject to AIA 35 U.S.C. 102 and 103 if it: Contains or contained at any time a claim to a claimed invention with an effective filing date on or after March 16, 2013, or Claims or ever claimed the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365…
Read MoreHow does AIA 35 U.S.C. 102(d) differ from the Hilmer doctrine?
AIA 35 U.S.C. 102(d) eliminates the Hilmer doctrine, which was applicable under pre-AIA law. The key differences are: Under the Hilmer doctrine, the effective filing date for U.S. patents as prior art was limited to their earliest U.S. filing date. Under AIA 35 U.S.C. 102(d), a U.S. patent document can have an effective filing date…
Read MoreWhat is the difference between the actual filing date and the effective filing date in pre-AIA patent law?
In pre-AIA patent law, the actual filing date and the effective filing date can be different. The MPEP 2139.01 explains: “The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. It is possible for different claims in a single application to have different effective filing dates.”…
Read MoreHow are U.S. patent application publications considered as prior art?
U.S. patent application publications are considered prior art under various sections of the patent law. According to MPEP 901.03: “U.S. patent application publications are prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of the publication date. Under pre-AIA 35 U.S.C. 102(e)(1) and 35 U.S.C. 102(a)(2), a U.S. patent application…
Read MoreHow does a prior foreign application affect the determination of prior art?
A prior foreign application can significantly affect the determination of prior art in U.S. patent examination. MPEP § 1302.06 directs us to MPEP § 202 and MPEP § 214 for detailed information on this topic. Key points to consider: The foreign priority date can be used as the effective filing date for prior art purposes…
Read MoreHow does the first-to-file system affect design patent applications?
The first-to-file system, implemented by the America Invents Act (AIA), affects design patent applications in several ways: Priority is given to the first inventor to file a patent application, regardless of the date of invention. It eliminates interference proceedings for design patents filed on or after March 16, 2013. It introduces derivation proceedings to determine…
Read MoreHow is the effective filing date determined for prior art purposes?
The effective filing date for prior art purposes is generally the earliest filing date to which the application is entitled. This can include provisional applications, foreign priority applications, and earlier-filed U.S. applications, provided they adequately support the claimed invention. The MPEP notes: In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed…
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