How does the common ownership exception work under AIA 35 U.S.C. 102(b)(2)(C)?
The common ownership exception under AIA 35 U.S.C. 102(b)(2)(C) provides a way to overcome certain prior art rejections. According to MPEP 2154.02(c): “AIA 35 U.S.C. 102(b)(2)(C) provides a third exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2). The exception of AIA 35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent,…
Read MoreWhat is the difference between AIA 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c)?
While both AIA 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c) deal with common ownership, there are significant differences between them. According to MPEP 2154.02(c): “If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a U.S. patent document that might otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) is not available as…
Read MoreWhat are the prior art exceptions under AIA 35 U.S.C. 102(b)(2)?
The AIA 35 U.S.C. 102(b)(2) provides three exceptions to prior art under AIA 35 U.S.C. 102(a)(2): 35 U.S.C. 102(b)(2)(A): Inventor-originated disclosure exception 35 U.S.C. 102(b)(2)(B): Inventor-originated prior public disclosure exception 35 U.S.C. 102(b)(2)(C): Common ownership or obligation of assignment exception These exceptions limit the use of an inventor’s own work as prior art and provide…
Read MoreWhen does the AIA 35 U.S.C. 102(b)(2)(C) exception not remove a U.S. patent document as prior art?
The AIA 35 U.S.C. 102(b)(2)(C) exception does not always remove a U.S. patent document as prior art. According to MPEP 2154.02(c): “The AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the effective filing date of the claimed invention). Thus,…
Read MoreWhat are the exceptions to the transitional application provisions?
There are three main exceptions to the transitional application provisions under 37 CFR 1.129(b)(1). An applicant will not be permitted to have additional inventions examined in an application if: (A) The requirement was made in the application or an earlier application relied on under 35 U.S.C. 120, 121, or 365(c) prior to April 8, 1995;…
Read MoreWhat are the exceptions to immediate action on reissue applications?
While reissue applications generally receive immediate attention, there are two main exceptions where they may be suspended or delayed: Litigation: If the reissue application is involved in ongoing litigation. Pending PTAB Trial: If there is a pending trial before the Patent Trial and Appeal Board (PTAB). The MPEP 1442 specifies that “A pending trial before…
Read MoreIs there any exception to statutory requirements for plant patents?
Yes, there is one exception to the statutory requirements for plant patents. According to MPEP § 1608: The sole exception in terms of applicability of these statutory provisions is set forth in 35 U.S.C. 162. 35 U.S.C. 162 provides specific provisions for plant patents, including the description requirement for plant patent applications. This exception acknowledges…
Read MoreAre there exceptions to USPTO employee restrictions on patent applications?
Are there exceptions to USPTO employee restrictions on patent applications? Yes, there are limited exceptions to the USPTO employee restrictions on patent applications. According to MPEP 1702: “The restrictions of this section shall not apply to testimony or statements given in court or in hearings before the USPTO in disbarment proceedings, or to the giving…
Read MoreAre there any exceptions to the public access policy for reissue applications?
While the general policy is to provide public access to reissue applications, there is an exception for certain types of continued prosecution applications (CPAs). According to MPEP 1470: “37 CFR 1.11(b) opens all reissue applications to inspection by the general public.“ However, the MPEP also notes an exception: “The filing of a continued prosecution application…
Read MoreAre there exceptions to announcing reissue applications in the Official Gazette?
Yes, there are exceptions to announcing reissue applications in the Official Gazette. According to MPEP 1430: Continued Prosecution Applications (CPAs) of design reissue applications: “The filing of a continued prosecution application (CPA) of a design reissue application under 37 CFR 1.53(d) (effective July 14, 2003, CPA practice was eliminated as to utility and plant applications)…
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