What is the significance of the America Invents Act (AIA) in relation to pre-AIA 35 U.S.C. 102(b)?
The America Invents Act (AIA) brought significant changes to U.S. patent law, particularly in relation to prior art and the determination of patentability. The MPEP section on pre-AIA 35 U.S.C. 102(b) begins with an important note: “[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file…
Read MoreHow does the AIA affect experimental use considerations?
The America Invents Act (AIA) has introduced changes that affect how experimental use is considered in patent law. The MPEP section on experimental use includes an editor’s note stating: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in…
Read MoreHow does the America Invents Act (AIA) affect the interpretation of commercial exploitation?
The America Invents Act (AIA) has introduced changes to how commercial exploitation is interpreted in patent law. The MPEP notes: “This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note).” For applications subject to AIA…
Read MoreHow does the AIA’s first-inventor-to-file system affect grace period disclosures?
The America Invents Act (AIA) introduced the first-inventor-to-file system, which significantly impacts how grace period disclosures are treated. Under this system, the MPEP section 2155.03 is specifically applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA. The MPEP notes: [Editor Note: This MPEP section is only applicable…
Read MoreHow does the America Invents Act (AIA) affect the applicability of pre-AIA 35 U.S.C. 102(g)?
The America Invents Act (AIA) significantly changed the U.S. patent system, transitioning from a first-to-invent to a first-inventor-to-file system. This change has important implications for the applicability of pre-AIA 35 U.S.C. 102(g). The MPEP provides guidance on this matter: This MPEP section has limited applicability to applications subject to examination under the first inventor to…
Read MoreHow does the AIA (America Invents Act) affect the treatment of CIP applications?
The America Invents Act (AIA) significantly changed the treatment of Continuation-In-Part (CIP) applications for patents filed on or after March 16, 2013. The MPEP 2133.01 notes: “[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35…
Read MoreWhat are admissions in patent law?
In patent law, admissions refer to statements made by an applicant in the specification or during prosecution that identify the work of another as “prior art.” These admissions can be used by the United States Patent and Trademark Office (USPTO) as prior art for both anticipation and obviousness determinations. As stated in MPEP 2152.03: “A…
Read MoreHow does 37 CFR 1.130 relate to the America Invents Act (AIA)?
37 CFR 1.130 is directly related to the America Invents Act (AIA) and is only applicable to patent applications subject to the first inventor to file (FITF) provisions of the AIA. It provides a mechanism for applicants to overcome prior art rejections under the new AIA provisions. Specifically, 37 CFR 1.130 allows applicants to establish…
Read MoreHow does the USPTO handle applications with different inventors but common assignees?
The USPTO has specific procedures for handling applications with different inventors but common assignees, especially when dealing with potentially overlapping inventions. MPEP 817 provides guidance on this issue, particularly in the context of the First Inventor to File (FITF) provisions of the America Invents Act (AIA). Form Paragraph 8.28.aia addresses situations where inventions are not…
Read MoreWhat is the purpose of an affidavit or declaration under 37 CFR 1.130?
An affidavit or declaration under 37 CFR 1.130 serves to establish that a disclosure was made by the inventor, a joint inventor, or someone who obtained the subject matter from them. According to MPEP 2155.04, it must show either: “(1) the disclosure in question was made by the inventor or a joint inventor, or the…
Read More