What is pre-AIA 35 U.S.C. 102(f) and when does it apply?
Pre-AIA 35 U.S.C. 102(f) is a provision that bars the issuance of a patent where an applicant did not invent the subject matter being claimed. It applies to patent applications that are not subject to the first inventor to file (FITF) provisions of the America Invents Act (AIA). According to the MPEP, Pre-AIA 35 U.S.C.…
Read MoreHow does pre-AIA 35 U.S.C. 102(f) apply when other statutory grounds for rejection are not available?
Pre-AIA 35 U.S.C. 102(f) can be a useful statutory ground for rejection even when other grounds, such as pre-AIA 35 U.S.C. 102(a) or (e), are not available. The MPEP explains: Pre-AIA 35 U.S.C. 102(f) does not require an inquiry into the relative dates of a reference and the application, and therefore may be applicable where…
Read MoreHow does pre-AIA 35 U.S.C. 102(f) interact with pre-AIA 35 U.S.C. 103?
Pre-AIA 35 U.S.C. 102(f) can interact with pre-AIA 35 U.S.C. 103 in certain situations. The MPEP explains that subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(f) can be used as a basis for an ex parte rejection under pre-AIA 35 U.S.C. 103. However, there’s an important exception to this rule. The…
Read MoreHow does derivation affect patent applications under pre-AIA 35 U.S.C. 102(f)?
Derivation under pre-AIA 35 U.S.C. 102(f) refers to situations where an inventor or at least one joint inventor derived an invention from another person. If derivation can be shown, it may result in a rejection of the patent application. The MPEP states: Where it can be shown that an inventor or at least one joint…
Read MoreWhat evidence is required to prove derivation under pre-AIA 35 U.S.C. 102(f)?
Proving derivation under pre-AIA 35 U.S.C. 102(f) requires specific evidence. The MPEP outlines the key requirements: Complete Conception: There must be evidence of complete conception by another person. The MPEP states: Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date…
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