What happens if an applicant disqualifies a reference under AIA 35 U.S.C. 102(b)(2)(C) but the reference still qualifies as prior art under AIA 35 U.S.C. 102(a)(1)?
What happens if an applicant disqualifies a reference under AIA 35 U.S.C. 102(b)(2)(C) but the reference still qualifies as prior art under AIA 35 U.S.C. 102(a)(1)? Even if an applicant successfully disqualifies a reference under AIA 35 U.S.C. 102(b)(2)(C), the reference may still be used as prior art if it qualifies under AIA 35 U.S.C.…
Read MoreWhat is the significance of ‘different inventive entity’ in MPEP 715.01(a)?
The concept of ‘different inventive entity’ is crucial in MPEP 715.01(a). It refers to situations where a reference (such as a patent or published application) names inventors that are not identical to those in the application being examined. The MPEP states: ‘Where the reference is a U.S. patent or application publication of a pending or…
Read MoreHow does a declaration under 37 CFR 1.130(a) differ from one under 37 CFR 1.132?
How does a declaration under 37 CFR 1.130(a) differ from one under 37 CFR 1.132? A declaration under 37 CFR 1.130(a) is specifically used for attribution purposes to disqualify a disclosure as prior art, while a declaration under 37 CFR 1.132 is more general and can be used for various purposes, including showing unexpected results…
Read MoreWhat is the difference between prior art under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2)?
The distinction between prior art under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) is crucial for understanding the application of the prior art exception under AIA 35 U.S.C. 102(b)(2)(C). According to MPEP 717.02(c): Prior art under 35 U.S.C. 102(a)(1) includes disclosures available to the public before the effective filing date of the claimed invention. Prior…
Read MoreWhat is the difference between 37 CFR 1.131(a) and 37 CFR 1.132 affidavits in patent applications?
The main difference between 37 CFR 1.131(a) and 37 CFR 1.132 affidavits lies in their purpose and timing: 37 CFR 1.131(a) affidavits are used to antedate a reference by showing prior invention. They are typically filed before final rejection. 37 CFR 1.132 affidavits are used for various purposes, including showing unexpected results, commercial success, or…
Read MoreWhat is derivation in the context of pre-AIA patent law?
In the context of pre-AIA patent law, derivation refers to a situation where the subject matter in a patent, application publication, or other publication is derived from the inventor’s or at least one joint inventor’s own invention. MPEP 715.01(c) explains: When the unclaimed subject matter of a patent, application publication, or other publication is the…
Read MoreHow are Defensive Publications cited as prior art?
Defensive Publications are cited as prior art under specific conditions: They are considered printed publications and cited under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or 102(b). They become effective as prior art from the date of publication in the Official Gazette. They can be used alone or in combination with other prior art…
Read MoreWhat is the difference between a Defensive Publication and a patent application publication?
A Defensive Publication is distinct from a patent application publication in several ways: It is not a patent or an application publication under 35 U.S.C. 122(b). It is considered a publication for prior art purposes. It becomes prior art only as of its publication date. The applicant waives rights to an enforceable patent when opting…
Read MoreHow does a declaration of attribution under 37 CFR 1.130(a) work?
A declaration of attribution under 37 CFR 1.130(a) is used to establish that a disclosure was made by the inventor or joint inventor, or that the subject matter was obtained from them. According to MPEP 717.01(a)(1): ’37 CFR 1.130(a) provides that an affidavit or declaration of attribution may be submitted to disqualify a disclosure as…
Read MoreWhat date must be overcome in a 37 CFR 1.131(a) affidavit or declaration?
When filing an affidavit or declaration under 37 CFR 1.131(a), the date that must be overcome is the effective date of the reference being used in the rejection. The MPEP clearly states: The date to be overcome under 37 CFR 1.131(a) is the effective date of the reference (i.e., the date on which the reference…
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