What is pre-AIA 35 U.S.C. 102(g) and how does it affect patent applications?
Pre-AIA 35 U.S.C. 102(g) is a provision in patent law that bars the issuance of a patent when another inventor made the same invention in the United States before the applicant and had not abandoned, suppressed, or concealed it. This section primarily applies to patent applications filed before March 16, 2013, which are not subject…
Read MoreHow does pre-AIA 35 U.S.C. 102(g) relate to ex parte rejections?
Pre-AIA 35 U.S.C. 102(g) can form the basis for an ex parte rejection under certain conditions. The MPEP states: Pre-AIA 35 U.S.C. 102(g) may form the basis for an ex parte rejection if: (1) the subject matter at issue has been actually reduced to practice by another before the inventor’s invention; and (2) there has…
Read MoreHow does pre-AIA 35 U.S.C. 102(g) interact with pre-AIA 35 U.S.C. 103?
Pre-AIA 35 U.S.C. 102(g) can interact with pre-AIA 35 U.S.C. 103 in patent examinations. The MPEP states: In addition, subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(g) may also be the basis for an ex parte rejection under pre-AIA 35 U.S.C. 103. This means that an invention that qualifies as prior…
Read MoreHow does pre-AIA 35 U.S.C. 102(g) apply to applications filed after March 16, 2013?
Pre-AIA 35 U.S.C. 102(g) can still apply to applications filed after March 16, 2013, under certain conditions. According to MPEP 2159.03: “Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied.” This means that if an application contains or contained at any time a claim…
Read MoreWhat is interference practice and how does it relate to pre-AIA 35 U.S.C. 102(g)?
Interference practice is a legal proceeding used to determine priority of invention between two or more parties claiming the same patentable invention. Pre-AIA 35 U.S.C. 102(g) forms the basis for interference practice. The MPEP states: This section of pre-AIA 35 U.S.C. 102 forms a basis for interference practice. See MPEP Chapter 2300 for more information…
Read MoreHow does the America Invents Act (AIA) affect the applicability of pre-AIA 35 U.S.C. 102(g)?
The America Invents Act (AIA) significantly changed the U.S. patent system, transitioning from a first-to-invent to a first-inventor-to-file system. This change has important implications for the applicability of pre-AIA 35 U.S.C. 102(g). The MPEP provides guidance on this matter: This MPEP section has limited applicability to applications subject to examination under the first inventor to…
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