What is the significance of naming inventors in publications and patent applications?

The naming of inventors in publications and patent applications is crucial for determining whether a disclosure qualifies for the grace period inventor-originated disclosure exception. The MPEP provides specific guidance: “This means that in circumstances where an application names additional persons as joint inventors relative to the persons named as authors in the publication (e.g., the…

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How can an applicant identify grace period inventor-originated disclosures?

Applicants can identify grace period inventor-originated disclosures in several ways: Include a statement in the patent application specification upon filing. The MPEP 2153.01(a) states: “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a).” Provide a copy of the grace period…

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How can an applicant establish that a disclosure falls under the grace period inventor-originated disclosure exception?

An applicant can establish that a disclosure falls under the grace period inventor-originated disclosure exception in several ways: Apparent from the disclosure itself: If the disclosure was made one year or less before the effective filing date, names the inventor or a joint inventor as an author, and does not name additional persons as authors,…

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What is the grace period for paying maintenance fees?

The grace period for paying maintenance fees is specified in 37 CFR 1.362(e). While MPEP 2531 doesn’t explicitly state the duration of the grace period, it references this regulation: “Reply to the notice is required prior to expiration of the grace period provided by 37 CFR 1.362(e) in order to avoid the expiration of the…

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How does the “grace period non-inventor disclosure exception” work in patent law?

The “grace period non-inventor disclosure exception” is a provision in 35 U.S.C. 102(b)(1)(B) that protects inventors from certain disclosures made by others within one year of their patent application filing. This exception is explained in MPEP 2153: “[A] disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art…

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How can an applicant use the grace period inventor’s disclosure exception to overcome a 102(a)(1) rejection?

How can an applicant use the grace period inventor’s disclosure exception to overcome a 102(a)(1) rejection? An applicant can use the grace period inventor’s disclosure exception under 35 U.S.C. 102(b)(1)(A) to overcome a 102(a)(1) rejection. According to MPEP 2152.06: “An applicant may overcome a rejection by filing an affidavit or declaration under 37 CFR 1.130(a)…

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What is a grace period inventor-originated disclosure?

A grace period inventor-originated disclosure is a type of prior art exception under the America Invents Act (AIA). This exception allows inventors to disclose their invention within a certain period before filing a patent application without having that disclosure count as prior art against their own application. The MPEP section 2153 refers to this concept:…

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