How can co-authorship affect a pre-AIA 35 U.S.C. 102 rejection?
When an inventor or at least one joint inventor is a co-author of a publication cited against an application, MPEP 715.01(c) outlines two ways to overcome a rejection under pre-AIA 35 U.S.C. 102(a) or (e): Filing an affidavit or declaration under 37 CFR 1.131(a). Filing a specific affidavit or declaration under 37 CFR 1.132 establishing…
Read MoreWhat are the different types of prior art rejections under 35 U.S.C. 102?
What are the different types of prior art rejections under 35 U.S.C. 102? Under 35 U.S.C. 102, there are several types of prior art rejections that patent examiners can use. According to MPEP 706.02, the main types are: 35 U.S.C. 102(a)(1) rejections: Based on public disclosures before the effective filing date 35 U.S.C. 102(a)(2) rejections:…
Read MoreWhat is a statutory bar in the context of MPEP 715.01(d)?
While MPEP 715.01(d) doesn’t explicitly define a statutory bar, it mentions it as an exception to when certain rejections can be overcome. The section states: “Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing that the claimed invention was used or known prior to…
Read MoreWhat countries are considered for establishing a date of invention under pre-AIA 35 U.S.C. 104?
Under pre-AIA 35 U.S.C. 104, an applicant or patentee can establish a date of invention by referencing knowledge, use, or other activity in the United States, NAFTA countries, or WTO member countries. The MPEP states: “Under 37 CFR 1.131(a), which provides for the establishment of a date of completion of the invention in a NAFTA…
Read MoreWhat is the purpose of MPEP 715.01(c)?
MPEP 715.01(c) provides guidance on how to overcome a rejection under pre-AIA 35 U.S.C. 102 when the reference cited is a publication of the inventor’s own invention. The section explains: Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be overcome by a showing…
Read MoreWhat is the significance of the one-year time frame in MPEP 715.05?
The one-year time frame is crucial in determining how to overcome a reference in patent applications subject to pre-AIA 35 U.S.C. 102. According to MPEP 715.05: “When the reference in question is a noncommonly owned U.S. patent or patent application publication claiming the same invention as applicant and its publication date is less than 1…
Read MoreIs MPEP 715.01(d) applicable to AIA (America Invents Act) applications?
No, MPEP 715.01(d) is generally not applicable to applications subject to the first inventor to file provisions of the AIA (America Invents Act). The section explicitly states: “[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a…
Read MoreHow does MPEP 715.01(c) apply to AIA applications?
MPEP 715.01(c) is primarily focused on pre-AIA applications. The section begins with an important note: [Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and…
Read MoreHow does the AIA 35 U.S.C. 102(b)(2)(C) exception differ from pre-AIA 35 U.S.C. 103(c)?
How does the AIA 35 U.S.C. 102(b)(2)(C) exception differ from pre-AIA 35 U.S.C. 103(c)? The AIA 35 U.S.C. 102(b)(2)(C) exception and the pre-AIA 35 U.S.C. 103(c) have some key differences: Scope of Application: AIA 35 U.S.C. 102(b)(2)(C) applies to both novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103) rejections, while pre-AIA 35 U.S.C. 103(c)…
Read MoreWhat activities can be applied against patent claims under MPEP 715.01(d)?
According to MPEP 715.01(d), activities showing that the claimed invention was used or known prior to the filing date of the application can be applied against patent claims, unless they constitute a statutory bar. Specifically, the MPEP states: “Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 or 103 based on…
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