What is the role of the patent examiner in investigating potential public uses under the AIA?
Under the AIA, patent examiners play an important role in investigating potential public uses that could affect the patentability of an invention. The MPEP provides guidance on this matter:
“[O]nce an examiner becomes aware that a claimed invention has been the subject of a potentially public use, the examiner should require the applicant to provide information showing that the use did not make the claimed process accessible to the public.”
This means that if an examiner becomes aware of a potential public use, they have the responsibility to:
- Raise the issue with the applicant
- Request information from the applicant about the nature of the use
- Determine whether the use made the invention accessible to the public
The burden is then on the applicant to provide evidence that the use did not constitute a public use under AIA 35 U.S.C. 102(a)(1). This process helps ensure that all relevant prior art is considered during the examination process.
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