What is the significance of “by another” in 35 U.S.C. 102(e)?
The phrase “by another” in 35 U.S.C. 102(e) is crucial for determining prior art. According to MPEP 2136.04: “If the application names the same inventive entity as the patent, the patent does not qualify as prior art under pre-AIA 35 U.S.C. 102(e).” This means that for a patent to be considered prior art under this…
Read MoreWho are considered “others” in the context of pre-AIA 35 U.S.C. 102(a)?
According to the MPEP, “The term ‘others’ in pre-AIA 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be ‘by others.’” This interpretation applies to all types of prior art references under pre-AIA 35 U.S.C. 102(a), including publications, public knowledge, and…
Read MoreWhat is the “names another inventor” requirement in AIA 35 U.S.C. 102(a)(2)?
The “names another inventor” requirement is a crucial aspect of AIA 35 U.S.C. 102(a)(2). For a U.S. patent document to qualify as prior art under this provision, it must name at least one inventor who is different from the inventors of the application under examination or patent under reexamination. The MPEP explains: This means that…
Read MoreHow does joint inventorship affect the “names another inventor” requirement?
In cases of joint inventorship, the “names another inventor” requirement under AIA 35 U.S.C. 102(a)(2) is satisfied even if only one joint inventor is different between the prior art document and the application under examination. MPEP 2154.01(c) clarifies: “Thus, in the case of joint inventors, only one joint inventor needs to be different for the…
Read MoreHow does joint inventorship affect prior art determination under 35 U.S.C. 102(e)?
Joint inventorship has significant implications for prior art determination under 35 U.S.C. 102(e). The MPEP 2136.04 provides guidance: “If the application names a subset of joint inventors A and B of a patent naming inventors A, B and C, the patent is ‘by another’ and therefore qualifies as prior art under pre-AIA 35 U.S.C. 102(e).”…
Read MoreHow does inventorship affect prior art determination under 35 U.S.C. 102(e)?
Inventorship plays a crucial role in determining prior art under 35 U.S.C. 102(e). The MPEP 2136.04 states: “If there is any difference in inventive entity, the patent may be applied in a rejection under pre-AIA 35 U.S.C. 102(e).” This means that even a slight difference in inventorship between the application and the potential prior art…
Read MoreWhat is the relevance of the inventive entity in pre-AIA 35 U.S.C. 102(e) rejections?
The inventive entity plays a crucial role in applying pre-AIA 35 U.S.C. 102(e) rejections. The MPEP states: “In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different from that of the cited reference.” Importantly, for applications with joint inventors, the MPEP clarifies: “Note that, where…
Read MoreHow does a continuation-in-part application affect the “by another” determination under pre-AIA 35 U.S.C. 102(e)?
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04: “Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to…
Read MoreCan a patent with common inventors be used as prior art under pre-AIA 35 U.S.C. 102(e)?
Yes, a patent with common inventors can be used as prior art under pre-AIA 35 U.S.C. 102(e) if the inventive entities are not identical. The MPEP clarifies this in MPEP 2136.04: “The fact that the application and reference have one or more inventors in common is immaterial.” This means that even if there are overlapping…
Read MoreWhat does “by another” mean in the context of pre-AIA 35 U.S.C. 102(e)?
In the context of pre-AIA 35 U.S.C. 102(e), “by another” means a different inventive entity. The MPEP clarifies this in MPEP 2136.04: “‘Another’ means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are…
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