When is a declaration under 37 CFR 1.130(a) not available?
A declaration under 37 CFR 1.130(a) is not available in the following situations: If the disclosure was made more than one year before the effective filing date of the claimed invention. When the disclosure is a U.S. patent or U.S. patent application publication that claims an invention substantially the same as the applicant’s, and the…
Read MoreWhat is the ‘grace period inventor’s disclosure’ exception under AIA?
What is the ‘grace period inventor’s disclosure’ exception under AIA? The ‘grace period inventor’s disclosure’ exception is a key provision under the America Invents Act (AIA) that protects inventors from their own disclosures. According to MPEP 717: AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions…
Read MoreWhat evidence is required to establish common ownership for AIA 35 U.S.C. 102(b)(2)(C)?
To establish common ownership for the AIA 35 U.S.C. 102(b)(2)(C) exception, specific evidence is required. The MPEP 717.02(b) provides guidance: The applicant (or the applicant’s representative of record) may submit a statement establishing that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned…
Read MoreWhat is the effective filing date for prior art exceptions under 35 U.S.C. 102(b)(2)(C)?
What is the effective filing date for prior art exceptions under 35 U.S.C. 102(b)(2)(C)? The effective filing date for prior art exceptions under 35 U.S.C. 102(b)(2)(C) is crucial for determining the applicability of the exception. According to MPEP 717.02(a): “The effective filing date of a claimed invention is determined on a claim-by-claim basis and not…
Read MoreWhat is the effective date for prior art exceptions under AIA 35 U.S.C. 102(b)(2)(C)?
The effective date for prior art exceptions under AIA 35 U.S.C. 102(b)(2)(C) is important to understand. According to MPEP 717.02(b): The exception under AIA 35 U.S.C. 102(b)(2)(C) applies to all applications filed on or after March 16, 2013, and to applications filed before March 16, 2013 that are subject to the first inventor to file…
Read MoreHow does common ownership affect the AIA 35 U.S.C. 102(b)(2)(C) exception?
Common ownership plays a crucial role in the AIA 35 U.S.C. 102(b)(2)(C) exception. The MPEP 717.02(b) states: If the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person, the…
Read MoreHow does the USPTO handle prior art exceptions after final rejection?
The USPTO gives special consideration to submissions concerning prior art exceptions even after a final rejection. As stated in MPEP 714.12: Applicant’s submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art disqualification under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made. If…
Read MoreWhere can I find information on overcoming a 35 U.S.C. 102 rejection?
Information on overcoming a 35 U.S.C. 102 rejection based on a printed publication or patent has been moved to MPEP § 2120.01. This section provides strategies and procedures for responding to and potentially overcoming novelty rejections. For AIA applications specifically, information on overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can be found in MPEP…
Read MoreWhat are the prior art exceptions under AIA 35 U.S.C. 102(b)(1) and (2)?
The prior art exceptions under AIA 35 U.S.C. 102(b)(1) and (2) provide circumstances where certain disclosures are not considered prior art. These exceptions are: Under 35 U.S.C. 102(b)(1), a disclosure made one year or less before the effective filing date is not prior art if: The disclosure was made by the inventor, joint inventor, or…
Read MoreHow does common ownership affect prior art under AIA 35 U.S.C. 102(b)(2)(C)?
Common ownership can disqualify certain disclosures as prior art under the AIA. Specifically, 35 U.S.C. 102(b)(2)(C) provides an exception for commonly owned subject matter. The MPEP states: 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed…
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