What happens if an applicant disqualifies a reference under AIA 35 U.S.C. 102(b)(2)(C) but the reference still qualifies as prior art under AIA 35 U.S.C. 102(a)(1)?

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.

Even if an applicant successfully disqualifies a reference under AIA 35 U.S.C. 102(b)(2)(C), the reference may still be used as prior art if it qualifies under AIA 35 U.S.C. 102(a)(1). The MPEP 717.02(c) states:

“Even if subject matter disclosed in the reference is disqualified as prior art under AIA 35 U.S.C. 102(a)(2) pursuant to AIA 35 U.S.C. 102(b)(2)(C), the reference may still be used as prior art under AIA 35 U.S.C. 102(a)(1) if the reference was published prior to the effective filing date of the claimed invention.”

This means that if the reference was publicly available before the effective filing date of the claimed invention, it can still be used as prior art under 102(a)(1), regardless of its disqualification under 102(b)(2)(C). Applicants should be aware that common ownership or joint research agreement exceptions do not apply to prior art under 102(a)(1).