When does confidential information in patent term extension applications become public?
The timing of when confidential information in patent term extension applications becomes public is addressed in MPEP 2760. The section states: “The information will not be made public as part of the patent file before a certificate of patent extension is issued. […] If such information was material to a determination of eligibility or any…
Read MoreDoes the AIA 35 U.S.C. 102(b)(2)(B) exception require a comparison with the claimed invention?
No, the AIA 35 U.S.C. 102(b)(2)(B) exception does not require a comparison with the claimed invention. The MPEP clearly states: “AIA 35 U.S.C. 102(b)(2)(B) does not discuss ‘the claimed invention’ with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent…
Read MoreHow does the best mode requirement contribute to public disclosure in patent law?
The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02: “If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the…
Read MoreHow does the AIA’s treatment of prior art affect independent inventors?
The AIA’s treatment of prior art has significant implications for independent inventors. Under AIA 35 U.S.C. 102(a)(1), an inventor’s own public disclosures can potentially be used as prior art against their patent application. However, the AIA also provides a grace period: “Disclosures of the subject matter made one year or less before the effective filing…
Read MoreWhat are the prior art exceptions under AIA 35 U.S.C. 102(b)(2)?
The AIA 35 U.S.C. 102(b)(2) provides three exceptions to prior art under AIA 35 U.S.C. 102(a)(2): 35 U.S.C. 102(b)(2)(A): Inventor-originated disclosure exception 35 U.S.C. 102(b)(2)(B): Inventor-originated prior public disclosure exception 35 U.S.C. 102(b)(2)(C): Common ownership or obligation of assignment exception These exceptions limit the use of an inventor’s own work as prior art and provide…
Read MoreHow does the AIA 35 U.S.C. 102(b)(2)(B) exception differ from the AIA 35 U.S.C. 102(b)(1)(B) exception?
While both exceptions relate to prior public disclosures by inventors, there are key differences: AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date). AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior…
Read MoreWhat are the main categories of prior art under AIA 35 U.S.C. 102(a)?
Under AIA 35 U.S.C. 102(a), there are two main categories of prior art: AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention. AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents. The MPEP states:…
Read MoreWhat constitutes abandonment, suppression, or concealment of an invention?
Abandonment, suppression, or concealment of an invention can occur when an inventor fails to take appropriate steps to make their invention publicly known within a reasonable time after completion. The MPEP cites the following examples: “Thus failure to file a patent application; to describe the invention in a publicly disseminated document; or to use the…
Read MoreWhat is the significance of the grace period in evaluating declarations under 37 CFR 1.130(b)?
What is the significance of the grace period in evaluating declarations under 37 CFR 1.130(b)? The grace period is crucial when evaluating declarations under 37 CFR 1.130(b). As explained in MPEP 717.01(b)(1): “If the declaration provides sufficient evidence that the publicly disclosed subject matter was publicly disclosed by the inventor or a joint inventor or…
Read MoreWhat types of evidence can support a declaration under 37 CFR 1.130(a)?
A declaration under 37 CFR 1.130(a) can be supported by various types of evidence. While the MPEP 717.01(a)(1) doesn’t provide an exhaustive list, it suggests that evidence should demonstrate how the subject matter was publicly disclosed. Types of evidence may include: Copies of publications or presentations Dated laboratory notebooks or research records Email correspondence or…
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