How can provisional applications be used as prior art under pre-AIA 35 U.S.C. 102(e)?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states: “Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.” This means that for a provisional application’s filing date to be used as the effective date for prior art purposes: The later-filed patent must claim benefit to the provisional application At least one claim in the patent must be fully supported by the provisional application’s disclosure The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e). Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Patent Claims Must Be Supported by Provisional Application MPEP 2136.02 Required Earlier Filed Applications Can Reject Claims MPEP 2136.02 Permitted Entire U.S. Patent Can Be Cited Against Claims MPEP 2136.02 Requirement for Pre-AIA 35 U.S.C. 102(e) Rejection MPEP 2132.01 Recommended Claims Must Be Supported by Provisional Description MPEP 2136.03 Permitted Canceled Example Cannot Be Used as Prior Art MPEP 2136.02 Claims Must Be Supported by Provisional Description MPEP 2139.03 Claims Must Be Supported by Provisional Description MPEP 2139.03 Claims Must Be Supported by Provisional Descri...