How does the USPTO treat disclosures with additional authors or inventors?
The USPTO’s treatment of disclosures with additional authors or inventors depends on how they relate to the named inventors in the patent application. According to MPEP 2153.01(a): 1. When the application names more inventors than the disclosure: “This means that in circumstances where an application names additional persons as joint inventors relative to the persons…
Read MoreHow can an applicant prove a disclosure is an inventor-originated disclosure?
An applicant can prove a disclosure is an inventor-originated disclosure in several ways, depending on whether it’s apparent from the disclosure itself or requires additional evidence. According to MPEP 2153.01(a): Apparent from the disclosure: If the disclosure names the inventor or a joint inventor as an author and was made within the grace period, it…
Read MoreWhat is the one-year grace period for inventor-originated disclosures?
The one-year grace period for inventor-originated disclosures is a provision in the America Invents Act (AIA) that allows inventors to disclose their inventions up to one year before filing a patent application without those disclosures being considered prior art against their own applications. MPEP 2153.01(a) states: “AIA 35 U.S.C. 102(b)(1)(A) first provides that a disclosure…
Read MoreIs there a grace period limitation for the AIA 35 U.S.C. 102(b)(2)(A) exception?
No, there is no grace period limitation for the AIA 35 U.S.C. 102(b)(2)(A) exception. The MPEP clearly states: In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception. This means that the exception can apply regardless of when the U.S. patent document was published or filed. The…
Read MoreHow does the inventor-originated disclosure exception work under AIA 35 U.S.C. 102(b)(2)(A)?
The inventor-originated disclosure exception under AIA 35 U.S.C. 102(b)(2)(A) limits the use of an inventor’s own work as prior art. According to MPEP 2154.02(a): “AIA 35 U.S.C. 102(b)(2)(A) provides an exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2). This exception limits the use of an inventor’s own work as prior art, when…
Read MoreHow 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…
Read MoreWhat 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:…
Read MoreWhat is the grace period inventor-originated disclosure exception?
The grace period inventor-originated disclosure exception is a provision in the America Invents Act (AIA) that allows certain disclosures made by inventors to be excluded as prior art. According to MPEP 2153.01(a): “AIA 35 U.S.C. 102(b)(1)(A) first provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is excepted…
Read MoreHow can an applicant establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2)?
An applicant can establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2) by using an affidavit or declaration. The MPEP states: Thus, if the subject matter in a U.S. patent document upon which the rejection is based is by another who obtained the subject matter from the inventor or a joint…
Read MoreWhat is the difference between apparent and non-apparent inventor-originated disclosures?
The distinction between apparent and non-apparent inventor-originated disclosures is important in determining how the USPTO treats prior art. According to MPEP 2153.01(a): Apparent inventor-originated disclosures: “A disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) if it is apparent from the disclosure itself that it is an inventor-originated disclosure. Specifically, Office personnel may not…
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