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)?

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)?

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).

To learn more:

• prior art
• AIA 35 U.S.C. 102(b)(2)(C)
• AIA 35 U.S.C. 102(a)(1)
• reference disqualification

To learn more:

• AIA 35 U.S.C. 102(b)(2)(C)
• AIA 35 U.S.C. 102(a)(1)