How can an applicant show that a reference is describing an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132. The MPEP states: “A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by filing an affidavit or declaration…
Read MoreCan an inventor’s own prior disclosure be used against them under Pre-AIA 35 U.S.C. 102(f)?
Can an inventor’s own prior disclosure be used against them under Pre-AIA 35 U.S.C. 102(f)? Generally, an inventor’s own prior disclosure cannot be used against them under Pre-AIA 35 U.S.C. 102(f). The MPEP clarifies: “Pre-AIA 35 U.S.C. 102(f) applies only to cases where the invention is derived from another. It does not apply to cases…
Read MoreHow is an inventor’s own work treated as prior art in patent applications?
An inventor’s own work is generally not considered prior art against their own patent application unless it falls under one of the statutory categories defined in 35 U.S.C. 102. MPEP 2129 states: “[E]ven if labeled as ‘prior art,’ the work of the same inventive entity may not be considered prior art against the claims unless…
Read MoreCan an inventor’s own work be used as prior art against their patent application?
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02: “Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by…
Read MoreWhat are the exceptions to prior art under 35 U.S.C. 102(b)(2)?
35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions: 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application…
Read MoreIs diligence or reduction to practice required when showing that a reference describes an inventor’s own work?
When showing that a reference describes an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection, the applicant does not need to show diligence or reduction to practice. The MPEP clearly states: “When the reference reflects an inventor’s or at least one joint inventor’s own work, evidence of diligence or reduction to practice…
Read MoreWhat is the difference between a 37 CFR 1.131 affidavit and a 37 CFR 1.132 affidavit?
The main difference between a 37 CFR 1.131 affidavit and a 37 CFR 1.132 affidavit lies in their purpose and when they are appropriate to use: 37 CFR 1.131 affidavit: Used to antedate a reference by proving prior invention. It is appropriate when the reference describes an invention by someone other than the applicant. 37…
Read MoreWhat is the significance of the “by others” requirement in Pre-AIA 35 U.S.C. 102(a)?
The “by others” requirement in Pre-AIA 35 U.S.C. 102(a) is a crucial element in determining what qualifies as prior art. The MPEP explains: “The fact that the prior art is ‘by others’ is a necessary condition for rejections under pre-AIA 35 U.S.C. 102(a).” This means that for a reference to be used as prior art…
Read MoreHow can an inventor overcome a rejection based on their own published work?
An inventor can overcome a rejection based on their own published work by showing that the publication was made by the inventor, at least one joint inventor, or on their behalf. This can be done through an affidavit or declaration under 37 CFR 1.132. As stated in MPEP 715.01(c): Unless it is a statutory bar,…
Read MoreHow can an applicant overcome a rejection based on prior use or knowledge under MPEP 715.01(d)?
MPEP 715.01(d) provides two main ways for an applicant to overcome a rejection based on prior use or knowledge: Affidavit or declaration under 37 CFR 1.131(a): The MPEP states: “a rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing that the claimed invention was used or known prior to the filing…
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