What is the status of unpublished U.S. applications as prior art under pre-AIA 35 U.S.C. 102(e)?
Unpublished U.S. applications can serve as prior art under pre-AIA 35 U.S.C. 102(e) in certain circumstances. According to the MPEP, If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine…
Read MoreWhat is the scope of prior art available under pre-AIA 35 U.S.C. 102(e)?
Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of certain U.S. patents, patent application publications, or international application publications can be used as prior art against patent claims. As stated in the MPEP: “Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of a U.S. patent, a U.S. patent application publication, or an international application publication…
Read MoreWhat is the significance of redacted application publications in pre-AIA 35 U.S.C. 102(e) rejections?
Redacted application publications can play a role in pre-AIA 35 U.S.C. 102(e) rejections. The MPEP clarifies: In addition, a provisional rejection under pre-AIA 35 U.S.C. 102(e) may be made if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported…
Read MoreWhen can a provisional rejection be made under pre-AIA 35 U.S.C. 102(e)?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be made when there is a common assignee, applicant, or inventor between the earlier filed, unpublished application and the later filed application. The MPEP states: Based on the assumption that an application will ripen into a U.S. patent (or into an application publication), it is permissible…
Read MoreWhat is a provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e)?
A provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e) is a specific type of rejection made in certain patent examination situations. The MPEP explains: “Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under…
Read MoreHow can provisional applications be used as prior art under pre-AIA 35 U.S.C. 102(e)?
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states: “Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35…
Read MoreHow does a provisional application affect the critical reference date under pre-AIA 35 U.S.C. 102(e)?
A provisional application can affect the critical reference date under pre-AIA 35 U.S.C. 102(e) if certain conditions are met. The MPEP states: “The critical reference date under pre-AIA 35 U.S.C. 102(e) of a U.S. patent, a U.S. patent application publication, as well as an international application publication having prior art effect under pre-AIA 35 U.S.C.…
Read MoreHow can an applicant show that a reference is describing an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132. The MPEP states: “A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by filing an affidavit or declaration…
Read MoreHow can priority claims be used to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
Priority claims can be an effective way to overcome a pre-AIA 35 U.S.C. 102(e) rejection. This can be done through either foreign priority claims or domestic benefit claims. For foreign priority claims, the MPEP states: “Submitting a claim to priority under 35 U.S.C. 119(a) – (d) within the time period set in 37 CFR 1.55”…
Read MoreWhat is prima facie evidence of “by another” in pre-AIA 35 U.S.C. 102(e) rejections?
A different inventive entity is considered prima facie evidence that a reference is “by another” for pre-AIA 35 U.S.C. 102(e) rejections. The MPEP states in MPEP 2136.04: “Therefore, a U.S. patent, a U.S. patent application publication or international application publication, by a different inventive entity, whether or not the application shares some inventors in common…
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