Why should examiners consider pre-AIA 35 U.S.C. 102(a) even if a reference is prior art under pre-AIA 35 U.S.C. 102(e)?
Examiners should consider pre-AIA 35 U.S.C. 102(a) even if a reference is prior art under pre-AIA 35 U.S.C. 102(e) for two main reasons: Earlier prior art date: The MPEP states, if the reference is a U.S. patent or patent application publication of, or claims benefit of, an international application, the publication of the international application…
Read MoreCan a foreign priority date be used as the pre-AIA 35 U.S.C. 102(e) reference date?
No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states: “Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not…
Read MoreHow does the effective filing date affect prior art under pre-AIA 35 U.S.C. 102(e)?
The effective filing date is crucial in determining what can be used as prior art under pre-AIA 35 U.S.C. 102(e). The MPEP explains: “It is the earliest effective U.S. filing date (which will include certain international filing dates) of the U.S. patent or application publication being relied on as the critical reference date and subject…
Read MoreIs diligence or reduction to practice required when showing that a reference describes an inventor’s own work?
When showing that a reference describes an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection, the applicant does not need to show diligence or reduction to practice. The MPEP clearly states: “When the reference reflects an inventor’s or at least one joint inventor’s own work, evidence of diligence or reduction to practice…
Read MoreWhat is the critical reference date for pre-AIA 35 U.S.C. 102(e) prior art?
The critical reference date for pre-AIA 35 U.S.C. 102(e) prior art is an important concept in determining whether a reference qualifies as prior art under this section. While the MPEP excerpt provided doesn’t give a specific definition, it refers to MPEP § 2136.03 for more information: “see MPEP § 2136.03 regarding critical reference date of…
Read MoreHow does a continuation-in-part application affect the “by another” determination under pre-AIA 35 U.S.C. 102(e)?
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04: “Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to…
Read MoreIs the date of conception or reduction to practice relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date?
No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states: “When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing…
Read MoreCan a patent with common inventors be used as prior art under pre-AIA 35 U.S.C. 102(e)?
Yes, a patent with common inventors can be used as prior art under pre-AIA 35 U.S.C. 102(e) if the inventive entities are not identical. The MPEP clarifies this in MPEP 2136.04: “The fact that the application and reference have one or more inventors in common is immaterial.” This means that even if there are overlapping…
Read MoreCan canceled portions of a patent application be used as prior art under pre-AIA 35 U.S.C. 102(e)?
No, canceled portions of a patent application cannot be used as prior art under pre-AIA 35 U.S.C. 102(e). The MPEP clearly states: “Portions of the patent application which were canceled are not part of the patent or application publication and thus cannot be relied on in a pre-AIA 35 U.S.C. 102(e) rejection over the issued…
Read MoreWhat does “by another” mean in the context of pre-AIA 35 U.S.C. 102(e)?
In the context of pre-AIA 35 U.S.C. 102(e), “by another” means a different inventive entity. The MPEP clarifies this in MPEP 2136.04: “‘Another’ means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are…
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