What statement is required to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C)?
To invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), the applicant or patent owner must provide a specific statement regarding common ownership. The MPEP provides guidance on this statement: The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement…
Read MoreHow can an applicant show common ownership to invoke the prior art exception?
How can an applicant show common ownership to invoke the prior art exception? To invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), an applicant must demonstrate common ownership. According to MPEP 717.02(a): The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement.…
Read MoreWhat is the ‘shielding effect’ in AIA 35 U.S.C. 102(b)(1)(B) and how does it work?
What is the ‘shielding effect’ in AIA 35 U.S.C. 102(b)(1)(B) and how does it work? The ‘shielding effect’ in AIA 35 U.S.C. 102(b)(1)(B) is a powerful protection for inventors who publicly disclose their invention before filing a patent application. According to MPEP 717: “AIA 35 U.S.C. 102(b)(1)(B) provides that a disclosure which would otherwise qualify…
Read MoreCan the prior art exception under 35 U.S.C. 102(b)(2)(C) be applied retroactively?
Can the prior art exception under 35 U.S.C. 102(b)(2)(C) be applied retroactively? The application of the prior art exception under 35 U.S.C. 102(b)(2)(C) is not retroactive. According to the MPEP 717.02(a): “The CREATE Act provisions of the AIA apply only to applications filed on or after September 16, 2012.” This means that the exception cannot…
Read MoreWhat are the requirements for establishing a prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?
To establish a prior art exception under AIA 35 U.S.C. 102(b)(2)(C), applicants must file a proper submission. According to MPEP 717.02(c), this can be done in two ways: Common ownership: A clear and conspicuous statement that the claimed invention and the subject matter disclosed were, not later than the effective filing date of the claimed…
Read MoreWhat are the requirements for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C)?
What are the requirements for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C)? To invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), specific requirements must be met. According to MPEP 717.02(a): “The applicant or patent owner may establish common ownership by providing a statement to the effect that the subject matter and the…
Read MoreWhat are the requirements for invoking the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C)?
To invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C), an applicant must: Amend the specification to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g). Submit the required statement to invoke the prior art exception. According to the MPEP, this statement…
Read MoreHow does the prior art exception affect double patenting rejections?
The prior art exception under 35 U.S.C. 102(b)(2)(C) can have implications for double patenting rejections. According to MPEP 717.02(c): Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application. Double patenting rejections may arise…
Read MoreHow does the prior art exception under 35 U.S.C. 102(b)(2)(C) affect PCT applications?
How does the prior art exception under 35 U.S.C. 102(b)(2)(C) affect PCT applications? The prior art exception under 35 U.S.C. 102(b)(2)(C) has specific implications for PCT applications. The MPEP 717.02(a) states: “The U.S. patent document that resulted from a PCT application filed before March 16, 2013, is available as prior art under 35 U.S.C. 102(e)…
Read MoreHow can the prior art exception under 35 U.S.C. 102(b)(2)(C) be invoked for joint research agreements?
The prior art exception under 35 U.S.C. 102(b)(2)(C) can also be invoked for joint research agreements. The MPEP outlines the requirements: In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) must provide a statement that the disclosure of the…
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