What is the status of unpublished U.S. applications as prior art under pre-AIA 35 U.S.C. 102(e)?
Unpublished U.S. applications can serve as prior art under pre-AIA 35 U.S.C. 102(e) in certain circumstances. According to the MPEP, If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine…
Read MoreWhat is the significance of redacted application publications in pre-AIA 35 U.S.C. 102(e) rejections?
Redacted application publications can play a role in pre-AIA 35 U.S.C. 102(e) rejections. The MPEP clarifies: In addition, a provisional rejection under pre-AIA 35 U.S.C. 102(e) may be made if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported…
Read MoreWhat is a redacted application publication in patent law?
A redacted application publication is a special type of patent application publication where certain information has been removed or obscured. MPEP 2154.01(d) mentions redacted publications in the context of provisional rejections: “[A] provisional rejection under 35 U.S.C. 102(a)(2) may be made, in the circumstances described below, if the earlier filed, pending application has been published…
Read MoreWhen can a provisional rejection be made under pre-AIA 35 U.S.C. 102(e)?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be made when there is a common assignee, applicant, or inventor between the earlier filed, unpublished application and the later filed application. The MPEP states: Based on the assumption that an application will ripen into a U.S. patent (or into an application publication), it is permissible…
Read MoreWhen can a provisional rejection be made for copending applications?
A provisional rejection can be made for copending applications under specific circumstances. According to MPEP 2154.01(d): “If a first application has (1) at least one common (joint) inventor or common applicant with a second application or the applications are commonly assigned, and (2) the first application, upon publication or issuance, would qualify as prior art…
Read MoreWhen can a provisional rejection be made under AIA 35 U.S.C. 102(a)(2)?
A provisional rejection under AIA 35 U.S.C. 102(a)(2) can be made in certain circumstances involving copending U.S. patent applications. The MPEP outlines two main scenarios: Applications with common inventors, applicants, or assignees: A provisional rejection can be made if: The applications have at least one common inventor, common applicant, or are commonly assigned. The first…
Read MoreWhat is a provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e)?
A provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e) is a specific type of rejection made in certain patent examination situations. The MPEP explains: “Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under…
Read MoreWhat is a provisional rejection under 35 U.S.C. 102(a)(2)?
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d): “If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending…
Read MoreHow are pending U.S. patent applications treated in terms of confidentiality and prior art?
Pending U.S. patent applications are generally kept confidential, but there are important exceptions and considerations: Most pending applications are preserved in confidence as per 37 CFR 1.14(a). Exceptions include published applications, reissue applications, and applications where public inspection has been granted. Applications with common assignees or inventors may be used for certain rejections, even if…
Read MoreHow can a provisional rejection under pre-AIA 35 U.S.C. 102(e) be overcome?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in several ways. The MPEP states: A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a pre-AIA 35 U.S.C. 102(e) rejection can be overcome. See MPEP § 2136.05. Additionally, The provisional rejection can also be overcome by…
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