What is the significance of the “catch-all” nature of the “otherwise available to the public” provision?
The “catch-all” nature of the “otherwise available to the public” provision in AIA 35 U.S.C. 102(a)(1) is significant because it broadens the scope of what can be considered prior art. As stated in MPEP 2152.02(e): “This ‘catch-all’ provision permits decision makers to focus on whether the disclosure was ‘available to the public,’ rather than on…
Read MoreHow are citations in a reexamination proceeding made publicly available?
Citations in a reexamination proceeding are made publicly available through the following process: The citations are entered into the patent’s Image File Wrapper (IFW) They are classified in a separate area of the IFW This separate area is labeled “Citations by Third Parties under 37 CFR 1.501” As stated in MPEP 2206: “The citations are…
Read MoreCan a non-sale commercial transaction be considered prior art under AIA?
Yes, under the AIA, a non-sale commercial transaction can potentially be considered prior art. The MPEP 2152.02(e) explicitly mentions: “[A] commercial transaction that does not constitute a sale under the Uniform Commercial Code (see, e.g., Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 59 USPQ2d 1121 (Fed. Cir. 2001) and MPEP § 2133.03(e)(1)).…
Read MoreHow does the “otherwise available to the public” provision affect internet disclosures?
The “otherwise available to the public” provision in AIA 35 U.S.C. 102(a)(1) significantly affects how internet disclosures are treated as potential prior art. According to MPEP 2152.02(e): “[A] document electronically posted on the Internet (see, e.g., Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 104 USPQ2d 1553 (Fed. Cir. 2012), In re…
Read MoreWhen does an international design application become publicly available in the United States?
An international design application designating the United States becomes publicly available after its publication under Article 10(3) of the Hague Agreement. The MPEP states: “The U.S. application file will be made available to the public via Patent Center after publication under Article 10(3) of an international registration designating the United States.” Prior to publication, access…
Read MoreWhat are the specific conditions for biological material deposits under 37 CFR 1.801-1.809?
The specific conditions for biological material deposits under 37 CFR 1.801-1.809 include: The deposit must be made in a recognized deposit facility. The deposit must be viable at the time of deposit. The deposit must be available to the public upon issuance of a patent. All restrictions on access to the deposit will be irrevocably…
Read MoreHow does the AIA affect the on-sale bar in patent law?
The America Invents Act (AIA) made significant changes to the on-sale bar in patent law. According to MPEP 2152.02(d): “The pre-AIA on sale bar is not limited to sales or offers for sale that make the invention available to the public… [Under AIA] the sale must make the invention available to the public.” Key changes…
Read MoreHow does the accessibility of foreign patents affect their use as prior art?
The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states: “We recognize that Geschmacksmuster on display for public view…
Read MoreWhat constitutes prior art for international patent searches?
According to MPEP 1843.01, prior art for international patent searches consists of: Everything made available to the public worldwide by written disclosure (including drawings and illustrations) Content capable of assisting in determining if the claimed invention is new or involves an inventive step Disclosures made available to the public prior to the international filing date…
Read MoreHow are internet disclosures treated as prior art in international patent searches?
According to MPEP 1843.01, internet disclosures are treated similarly to other written disclosures in international patent searches: Information disclosed on the internet is considered publicly available from the date of public posting Examiners should obtain and cite printouts of relevant internet disclosures The printout should include the URL and publication date of the disclosure Internet…
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