What is the significance of the statutory bar under pre-AIA 35 U.S.C. 102(b)?
The statutory bar under pre-AIA 35 U.S.C. 102(b) is a critical concept in patent law that can prevent an inventor from obtaining a patent. According to MPEP 2133.02: “A rejection under pre-AIA 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131 (Rule 131 Declarations), foreign priority dates, or evidence that…
Read MoreWhat is the significance of the critical date in pre-AIA 35 U.S.C. 102(b) rejections?
The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.…
Read MoreCan a secret use of an invention constitute public use?
Yes, in some circumstances, a secret or confidential use of an invention can constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP explains: “[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.” (MPEP 2133.03(a)) This means that even if…
Read MoreCan a secret patent be used as prior art under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b)?
No, a secret patent cannot be used as prior art under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b). The MPEP 2126 states: “Even if a patent grants an exclusionary right (is enforceable), it is not available as prior art under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b) if it…
Read MoreWhat constitutes a “public use” under pre-AIA 35 U.S.C. 102(b)?
A “public use” under pre-AIA 35 U.S.C. 102(b) occurs when the invention is both in public use before the critical date and ready for patenting. The Federal Circuit in Invitrogen Corp. v. Biocrest Manufacturing L.P. outlined a two-part test: The purported use was accessible to the public; or The invention was commercially exploited. The court…
Read MoreIs public knowledge the same as public use under pre-AIA 35 U.S.C. 102(b)?
No, public knowledge is not necessarily the same as public use under pre-AIA 35 U.S.C. 102(b). The MPEP clearly states: “Mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) bars public use or sale, not public knowledge.” (MPEP 2133.03(a)) However, it’s important to…
Read MoreWhat is the significance of pre-AIA 35 U.S.C. 102(b) in determining prior art?
Pre-AIA 35 U.S.C. 102(b) is significant because it creates a statutory bar to obtaining a patent. According to the MPEP, If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the claimed invention (MPEP § 2139.01), the reference qualifies as prior art under pre-AIA…
Read MoreWhat constitutes a “patent” for rejection purposes under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) and (b)?
The designation of a document as a “patent” by a foreign country does not automatically qualify it as a patent for rejection purposes under U.S. patent law. As stated in MPEP 2126: “It is the substance of the rights conferred and the way information within the ‘patent’ is controlled that is determinative.” This means that…
Read MoreWhen is a patent considered available to the public for prior art purposes?
A patent is considered available to the public for prior art purposes under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b) when it is made sufficiently accessible. According to MPEP 2126: “The patent is sufficiently available to the public for the purposes of 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b)…
Read MoreHow can I overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication or patent?
There are several ways to overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication or patent: Persuasively argue that the claims are patentably distinguishable from the prior art Amend the claims to patentably distinguish over the prior art Submit and perfect a benefit claim under 35 U.S.C. 120 Submit and perfect a…
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