What are the requirements for submitting foreign patents and publications in reexamination?
When submitting foreign patents and publications in a reexamination proceeding, there are specific requirements that must be met. According to MPEP 2656: “37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications…
Read MoreWhat is Pre-AIA 35 U.S.C. 102(d) and when does it apply?
Pre-AIA 35 U.S.C. 102(d) is a provision of patent law that establishes statutory bars against granting a patent in the United States under certain conditions related to foreign patents or inventor’s certificates. It’s important to note that this provision is not applicable to applications subject to examination under the first inventor to file (FITF) provisions…
Read MoreHow does the MPEP address pre-AIA 35 U.S.C. 102 with respect to foreign patent dates?
The MPEP provides guidance on cases that discuss the date of patenting for foreign patents in the context of pre-AIA 35 U.S.C. 102. Specifically, MPEP 2126.01 states: “For a list of cases that discuss the date of patenting countries for purposes of pre-AIA 35 U.S.C. 102 in particular, see Chisum, Patents § 3.06[4] n.2.” (MPEP…
Read MoreWhat constitutes a “patent” for rejection purposes under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) and (b)?
The designation of a document as a “patent” by a foreign country does not automatically qualify it as a patent for rejection purposes under U.S. patent law. As stated in MPEP 2126: “It is the substance of the rights conferred and the way information within the ‘patent’ is controlled that is determinative.” This means that…
Read MoreWhat is the significance of the In re Monks case for patent reference dates?
The In re Monks case is significant in establishing the general rule for when a foreign patent becomes available as a reference. MPEP 2126.01 cites this case: “In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978).” (MPEP 2126.01) This case affirmed the principle that the date a foreign patent becomes available as a…
Read MoreWhat is the exception to the general rule for foreign patent reference dates?
While the general rule is that a foreign patent becomes available as a reference on the date it becomes enforceable, there is an important exception. The MPEP states: “There is an exception to this rule when the patent is secret as of the date the rights are awarded.” (MPEP 2126.01) This exception, based on the…
Read MoreWhen is a foreign patent considered available as a reference?
Generally, a foreign patent is considered available as a reference on the date it becomes enforceable. This is typically the date when the sovereign formally bestows patent rights to the applicant. As stated in the MPEP: “The date the patent is available as a reference is generally the date that the patent becomes enforceable. This…
Read MoreWhere can I find a summary of patenting dates for foreign patents?
The MPEP provides a convenient resource for finding patenting dates of foreign patents. As stated in MPEP 2126.01: “Note that MPEP § 901.05 summarizes in tabular form dates of patenting for many foreign patents.” (MPEP 2126.01) This tabular summary in MPEP § 901.05 can be a valuable reference for patent examiners, attorneys, and inventors when…
Read MoreHow does an examiner determine if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate?
An examiner determines if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate by discovering a foreign patent or inventor’s certificate that meets the statutory requirements. The MPEP states: “If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory…
Read MoreIs there a difference in enablement requirements for U.S. and foreign prior art?
No, there is no difference in enablement requirements between U.S. and foreign prior art. The MPEP 2121 explicitly states: “There is no basis in the statute (35 U.S.C. 102 or 103) for discriminating either in favor of or against prior art references on the basis of nationality.” This principle ensures that all prior art is…
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