Does the manner of disclosure matter for invoking the 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) exceptions?
No, the manner or mode of disclosure is not critical when invoking the exceptions under 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B). The MPEP clarifies: “The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b) is not critical.” This means: The subject matter doesn’t need to be disclosed in the…
Read MoreHow do species and genus disclosures affect the application of 35 U.S.C. 102(b)(2)(B) exceptions?
The relationship between species and genus disclosures can significantly affect the application of 35 U.S.C. 102(b)(2)(B) exceptions. The MPEP provides guidance on different scenarios: Inventor discloses species, intervening disclosure is genus: “If the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO…
Read MoreWhat does ‘same subject matter’ mean in the context of 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) exceptions?
The concept of ‘same subject matter’ is crucial in applying the exceptions under 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B). According to the MPEP: “The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure.”…
Read MoreCan a portion of an intervening disclosure be excepted as prior art?
Yes, only a portion of an intervening disclosure can be excepted as prior art. The MPEP states: “Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a).” This means that any part of the third…
Read MoreCan a partial disclosure be disqualified under 37 CFR 1.130(b)?
Yes, it is possible to disqualify only a portion of an intervening disclosure under 37 CFR 1.130(b). The MPEP provides clear guidance on this matter: Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a).…
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