When should an examiner search for foreign patents under pre-AIA 35 U.S.C. 102(d)?
An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this: “The examiner should undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art only if there is a reasonable possibility that a foreign patent…
Read MoreHow does pre-AIA 35 U.S.C. 102(d) treat patents with a period of secrecy?
Under pre-AIA 35 U.S.C. 102(d), patents that have a period of secrecy after granting are treated differently than under other subsections of 35 U.S.C. 102. According to MPEP 2126: “But a period of secrecy after granting the patent has been held to have no effect in connection with pre-AIA 35 U.S.C. 102(d). These patents are…
Read MoreWhat is the effect of a foreign patent’s term on its use as prior art under pre-AIA 35 U.S.C. 102(d)?
The term or expiration of a foreign patent can impact its use as prior art under pre-AIA 35 U.S.C. 102(d). According to MPEP 2126: “In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978) interpreted the language ‘patented in a foreign country’ in pre-AIA 35 U.S.C. 102(d) to mean a patent which is enforceable.”…
Read MoreHow can examiners search for foreign patents for pre-AIA 35 U.S.C. 102(d) rejections?
Examiners have several methods to search for foreign patents that could be used for pre-AIA 35 U.S.C. 102(d) rejections. The MPEP outlines the following approaches: Electronic database search: “The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information…
Read MoreHow does an examiner determine if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate?
An examiner determines if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate by discovering a foreign patent or inventor’s certificate that meets the statutory requirements. The MPEP states: “If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory…
Read MoreWhat types of documents can be used for a pre-AIA 35 U.S.C. 102(d) rejection?
For a pre-AIA 35 U.S.C. 102(d) rejection, only specific types of documents can be used. The MPEP clearly states: “The document must be a patent or inventor’s certificate and not merely a published or laid open application.“ This means that only granted patents or inventor’s certificates can serve as the basis for a pre-AIA 35…
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