How does the AIA affect the relevant time for determining enabling prior art?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 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. The America Invents Act (AIA) has changed the relevant time for determining enabling prior art. As noted in MPEP 2121.02 : “For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is ‘before the effective filing date of the claimed invention’. For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is ‘at the time of the invention’.” This means that for AIA applications, the critical date for assessing whether prior art is enabling is the effective filing date of the claimed invention, not the invention date. This shift aligns with the AIA’s move to a first-inventor-to-file system and can impact how prior art is evaluated in patent examination. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirement for Effective Filing Date Before Invention MPEP 2121.02 Relevant Time for Pre-AIA Inventions MPEP 2121.02 Same Disclosure Required for All Prior Art Types MPEP 2121 Required No Discrimination Based on Nationality of Prior Art MPEP 2121 Prior Art Must Enable Invention for Anticipation MPEP 2121 Operability Presumption for Anticipatory Prior Art MPEP 2121 Time of Invention for AIA Patents MPEP 2121.02 Permitted Examiner Can Reject Claims Based on Anticipation Without Enabling Inquiry MPEP 2121 Applicant Can Argue Lack of Enablement Without Evidence MPEP 2121 Permitted Enabling Disclosure Requirement for Anticipation MPEP 2121 Required Other Related FAQs 5 FAQs Collapse What is the significance of &#8220;analogous art&#8221; in determining enablement for chemical compounds? Does an author&#8217;s failure to synthesize a compound invalidate it as prior art? What constitutes enabling prior art for compounds a...