What is the critical reference date for pre-AIA 35 U.S.C. 102(e) prior art?
The critical reference date for pre-AIA 35 U.S.C. 102(e) prior art is an important concept in determining whether a reference qualifies as prior art under this section. While the MPEP excerpt provided doesn’t give a specific definition, it refers to MPEP ยง 2136.03 for more information: “see MPEP ยง 2136.03 regarding critical reference date of…
Read MoreWhat is the impact of continuation-in-part applications on effective filing dates?
Continuation-in-part (CIP) applications can have a significant impact on effective filing dates. According to MPEP 2154.01(b): The AIA draws a distinction between actually filed and effectively filed dates. The “effectively filed” date of a subject matter described in a U.S. patent document is the earlier of: (1) The actual filing date of the patent or…
Read MoreWhat precautions should be taken when claiming priority to a pre-AIA application?
When claiming priority to a pre-AIA application (filed before March 16, 2013) in a new application filed on or after March 16, 2013, special care must be taken. The MPEP 2159.03 advises: “For these reasons, when subject matter is claimed in an application filed on or after March 16, 2013 having priority to or the…
Read MoreWhat is required when depositing biological material after the filing date of a patent application?
When depositing biological material after the effective filing date of a patent application, the applicant must promptly submit a corroborating statement. According to MPEP 2406.02: “When the original deposit is made after the effective filing date of an application for patent, an applicant is required to promptly submit a statement from a person in a…
Read MoreHow does claiming benefit to an earlier application affect AIA status?
Claiming benefit to an earlier application can affect the AIA status of a patent application. According to MPEP 2159.02: “If a patent application (1) contains or contained at any time a claim to a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013…
Read MoreHow does submitting a benefit claim under 35 U.S.C. 119(e) help overcome a pre-AIA 35 U.S.C. 102(b) rejection?
Submitting a benefit claim under 35 U.S.C. 119(e) can help overcome a pre-AIA 35 U.S.C. 102(b) rejection by potentially changing the effective filing date of your application. Here’s how it works: Submit and perfect the benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78. If successful, the examiner must…
Read MoreHow does the AIPA affect the critical reference date for continuations and divisionals?
The American Inventors Protection Act of 1999 (AIPA) has a significant impact on the critical reference date for continuations and divisionals. According to MPEP 2136.03: “The AIPA amended 35 U.S.C. 102(e) to eliminate the reference to the date of invention. The critical reference date of a U.S. patent or patent application publication under pre-AIA 35…
Read MoreHow does the AIA change the treatment of prior art compared to pre-AIA law?
The AIA significantly changes how prior art is treated compared to pre-AIA law: Focus on effective filing date: AIA 35 U.S.C. 102(a)(1) and (a)(2) refer to activities occurring “before the effective filing date of the claimed invention” rather than the invention date. Elimination of swearing behind: The MPEP states, As a result, it is no…
Read MoreWhat is the main difference between AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103?
The most significant difference between AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a) is the timing of the obviousness determination. As stated in the MPEP: “AIA 35 U.S.C. 103 determines obviousness before the effective filing date of the claimed invention, rather than as of the time that the claimed invention was made.“ This change…
Read MoreHow does the AIA define “public use” for patent purposes?
How does the AIA define “public use” for patent purposes? The America Invents Act (AIA) provides a specific definition of “public use” for patent purposes. According to MPEP 2152.02(c): “Under AIA 35 U.S.C. 102(a)(1), a person shall be entitled to a patent unless the claimed invention was in public use before the effective filing date…
Read More