What is the main difference between AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103?
The most significant difference between AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a) is the timing of the obviousness determination. As stated in the MPEP: “AIA 35 U.S.C. 103 determines obviousness before the effective filing date of the claimed invention, rather than as of the time that the claimed invention was made.“ This change…
Read MoreHow does AIA 35 U.S.C. 103 differ in terminology from pre-AIA 35 U.S.C. 103?
AIA 35 U.S.C. 103 uses slightly different terminology compared to pre-AIA 35 U.S.C. 103, but this change does not affect the approach to determining obviousness. The MPEP states: “AIA 35 U.S.C. 103 requires consideration of ‘the differences between the claimed invention and the prior art,’ while pre-AIA 35 U.S.C. 103 refers to ‘the differences between…
Read MoreHow does AIA 35 U.S.C. 103 define prior art for obviousness determinations?
AIA 35 U.S.C. 103 relies on AIA 35 U.S.C. 102(a) to define prior art for both novelty and obviousness determinations. The MPEP states: “AIA 35 U.S.C. 102(a) defines what is prior art both for purposes of novelty under AIA 35 U.S.C. 102 as well as for purposes of obviousness under AIA 35 U.S.C. 103.“ This…
Read MoreHow does AIA 35 U.S.C. 103 affect the determination of obviousness?
AIA 35 U.S.C. 103 has modified the determination of obviousness in patent examination. The key changes include: Elimination of pre-AIA 35 U.S.C. 103(c), which provided a safe harbor for commonly owned prior art or prior art resulting from a joint research agreement. Introduction of a new prior art exception under AIA 35 U.S.C. 102(b)(2)(C) for…
Read MoreHow do admissions affect anticipation and obviousness determinations?
Admissions by an applicant can significantly impact both anticipation and obviousness determinations in patent examination. As stated in MPEP 2152.03: “A statement by an applicant in the specification or made during prosecution identifying the work of another as ‘prior art’ is an admission which can be relied upon for both anticipation and obviousness determinations, regardless…
Read MoreWhat constitutes an admission as prior art in patent law?
An admission as prior art in patent law occurs when an applicant identifies the work of another as “prior art” in the specification or during prosecution. According to MPEP 2129, such admissions “can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art…
Read MoreIs absolute predictability required for a reasonable expectation of success?
No, absolute predictability is not required for a reasonable expectation of success in patent law. The MPEP 2143.02 states: “Obviousness does not require absolute predictability, but at least some degree of predictability is required.” This means that while complete certainty is not necessary, there should be a reasonable level of predictability that the proposed combination…
Read MoreCan species that are obvious over each other be subject to a restriction requirement?
Generally, species that are considered clearly unpatentable (obvious) over each other should not be subject to a restriction requirement. The MPEP provides specific guidance on this matter: As stated in MPEP 808.01(a): “Election of species should not be required between claimed species that are considered clearly unpatentable (obvious) over each other. In making a requirement…
Read MoreWhat factors determine if designs are patentably distinct in a design patent application?
Determining if designs are patentably distinct in a design patent application involves considering several factors: Overall Appearance: The designs must be compared as a whole, not by individual elements. Design Characteristics: The MPEP states that designs are not distinct if “(A) the multiple designs have overall appearances with basically the same design characteristics; and (B)…
Read MoreWhat is the definition of inventive step in PCT applications?
The definition of inventive step for PCT applications is provided in MPEP 1878.01(a)(2), which cites PCT Article 33(3): “For purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant…
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