How can an applicant overcome a pre-AIA 35 U.S.C. 102(b) rejection?
According to MPEP 2133.02(a), an applicant can overcome a pre-AIA 35 U.S.C. 102(b) rejection in several ways: Persuasively arguing that the claims are patentably distinguishable from the prior art Amending the claims to patentably distinguish over the prior art Submitting and perfecting a benefit claim under 35 U.S.C. 120 within the time period set in…
Read MoreHow can an applicant overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication?
To overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication, an applicant can take the following steps: Prove earlier invention date: Show that the invention was conceived and reduced to practice before the critical date (one year prior to the U.S. filing date). Challenge publication date: Provide evidence that the reference was…
Read MoreHow does the “on sale” bar apply to foreign activities under pre-AIA 35 U.S.C. 102(b)?
The application of the “on sale” bar to foreign activities under pre-AIA 35 U.S.C. 102(b) is nuanced. Generally, it does not apply to activities entirely outside the U.S., but there are exceptions: 1. Foreign manufacture and delivery: “The ‘on sale’ bar does not generally apply where both manufacture and delivery occur in a foreign country.”…
Read MoreDoes an inventor’s private use of an invention constitute public use?
Generally, an inventor’s private use of an invention for their own enjoyment does not constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP provides guidance on this matter: “An inventor’s private use of the invention, for his or her own enjoyment is not a public use.” (MPEP 2133.03(a)) This principle is illustrated in the…
Read MoreWhat constitutes public use when an inventor allows another to use the invention?
When an inventor allows another person to use the invention, it may constitute public use under pre-AIA 35 U.S.C. 102(b) if certain conditions are met. The MPEP provides guidance on this issue: “‘Public use’ of a claimed invention under pre-AIA 35 U.S.C. 102(b) occurs when the inventor allows another person to use the invention without…
Read MoreHow does use by independent third parties affect public use determinations?
Use of an invention by independent third parties can constitute public use under pre-AIA 35 U.S.C. 102(b) in certain circumstances. The MPEP provides guidance on this issue: “Any ‘nonsecret’ use of an invention by someone unconnected to the inventor, such as someone who has independently made the invention, in the ordinary course of a business…
Read MoreHow does the presence or absence of a confidentiality agreement affect public use determinations?
The presence or absence of a confidentiality agreement is a factor in determining public use under pre-AIA 35 U.S.C. 102(b), but it is not dispositive. The MPEP states: “The presence or absence of a confidentiality agreement is not dispositive of the public use issue, but ‘is one factor to be considered in assessing all the…
Read MoreHow does commercial exploitation affect public use determinations?
Commercial exploitation plays a significant role in determining whether an invention has been in public use under pre-AIA 35 U.S.C. 102(b). The MPEP states: “Commercial exploitation is a clear indication of public use, but it likely requires more than, for example, a secret offer for sale.” (MPEP 2133.03(a)) This means that even if an invention…
Read MoreHow does submitting a declaration under 37 CFR 1.131(a) help overcome a pre-AIA 35 U.S.C. 102(b) rejection?
Submitting a declaration under 37 CFR 1.131(a), also known as an affidavit or declaration of prior invention, can help overcome a pre-AIA 35 U.S.C. 102(b) rejection by establishing that the inventor had conceived and reduced the invention to practice before the critical date. This process is often referred to as “swearing behind” a reference. The…
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