How does the America Invents Act (AIA) affect the applicability of pre-AIA 35 U.S.C. 102(g)?
The America Invents Act (AIA) significantly changed the U.S. patent system, transitioning from a first-to-invent to a first-inventor-to-file system. This change has important implications for the applicability of pre-AIA 35 U.S.C. 102(g). The MPEP provides guidance on this matter:
This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, MPEP § 2159.03 for the conditions under which this section applies to an AIA application, and MPEP § 2150 et seq. for examination of applications subject to those provisions.
Key points to understand:
- Pre-AIA 35 U.S.C. 102(g) primarily applies to patent applications filed before March 16, 2013.
- For applications filed on or after March 16, 2013, the FITF provisions of the AIA generally apply.
- There are some limited circumstances where pre-AIA 35 U.S.C. 102(g) may still be relevant to AIA applications.
To determine whether an application is subject to pre-AIA or AIA provisions, refer to MPEP § 2159 et seq. For specific conditions where pre-AIA 35 U.S.C. 102(g) might apply to an AIA application, see MPEP § 2159.03.
Patent attorneys and examiners should carefully consider the filing date of the application and any related applications to determine which provisions apply.
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