Can an applicant voluntarily identify grace period inventor-originated disclosures?
Yes, an applicant can voluntarily identify grace period inventor-originated disclosures. The MPEP encourages this practice: “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). An applicant is not required to identify any prior inventor-originated disclosures or to use the format…
Read MoreHow does the USPTO determine if a disclosure is an inventor-originated disclosure?
The USPTO determines if a disclosure is an inventor-originated disclosure through a case-by-case analysis. According to the MPEP: “What evidence is necessary to show that the disclosure is an inventor-originated disclosure requires case-by-case treatment, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor-originated…
Read MoreWhat types of documents are considered “U.S. patent documents” under the AIA 35 U.S.C. 102(b)(2)(A) exception?
According to the MPEP, “U.S. patent documents” under the AIA 35 U.S.C. 102(b)(2)(A) exception include: U.S. patents U.S. patent application publications WIPO published applications The MPEP specifically states: This exception limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application…
Read MoreWhat is the “subject matter” requirement for the AIA 35 U.S.C. 102(b)(2)(B) exception?
The “subject matter” requirement is crucial for applying the AIA 35 U.S.C. 102(b)(2)(B) exception. The MPEP clarifies: “The subject matter in the prior disclosure being relied upon under AIA 35 U.S.C. 102(a) must be the same ‘subject matter’ as the subject matter previously publicly disclosed by the inventor for the exceptions in AIA 35 U.S.C.…
Read MoreWhat is the role of affidavits or declarations in establishing the grace period inventor-originated disclosure exception?
Affidavits or declarations play a crucial role in establishing the grace period inventor-originated disclosure exception when it’s not apparent from the disclosure itself or the patent application specification. The MPEP states: “The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior…
Read MoreHow can an inventor prove a prior public disclosure for the AIA 35 U.S.C. 102(b)(2)(B) exception?
To prove a prior public disclosure for the AIA 35 U.S.C. 102(b)(2)(B) exception, inventors can use affidavits or declarations. The MPEP provides guidance on this: “MPEP § 2155.02 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by the inventor or a joint inventor, and MPEP §…
Read MoreWhat is the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(B)?
The Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(B) provides an exception to prior art under AIA 35 U.S.C. 102(a)(2). This exception applies to subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or someone who obtained the subject matter directly or…
Read MoreWhat is the one-year grace period for inventor-originated disclosures?
The one-year grace period for inventor-originated disclosures is a provision in the America Invents Act (AIA) that allows inventors to disclose their inventions up to one year before filing a patent application without those disclosures being considered prior art against their own applications. MPEP 2153.01(a) states: “AIA 35 U.S.C. 102(b)(1)(A) first provides that a disclosure…
Read MoreIs there a grace period limitation for the AIA 35 U.S.C. 102(b)(2)(A) exception?
No, there is no grace period limitation for the AIA 35 U.S.C. 102(b)(2)(A) exception. The MPEP clearly states: In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception. This means that the exception can apply regardless of when the U.S. patent document was published or filed. The…
Read MoreWhat is the purpose of MPEP 2124?
What is the purpose of MPEP 2124? MPEP 2124 outlines an important exception to the general rule that a reference must qualify as prior art to be used in rejecting claims. The purpose of this section is to explain when and how a reference that is not prior art can still be used to show…
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