How does an examiner determine if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate?

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.

An examiner determines if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate by discovering a foreign patent or inventor’s certificate that meets the statutory requirements. The MPEP states:

“If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory bar.“

The examiner should undertake a search for such foreign patents only if there’s a reasonable possibility that one has been granted before the U.S. effective filing date. This typically occurs when there’s a significant time gap between foreign and U.S. filings.

For further clarification on the requirements, examiners are directed to MPEP § 2135.01.