What is the significance of the phrase “at the time the claimed invention was made” in Pre-AIA 35 U.S.C. 103(c)?
What is the significance of the phrase “at the time the claimed invention was made” in Pre-AIA 35 U.S.C. 103(c)?
The phrase “at the time the claimed invention was made” is crucial in understanding the application of Pre-AIA 35 U.S.C. 103(c). According to the MPEP 2146:
“The phrase ‘at the time the claimed invention was made’ is important. The pre-AIA 35 U.S.C. 103(c) exception applies only to what was owned or subject to an obligation of assignment at the time the claimed invention was made.”
This timing is significant because:
- It determines whether the subject matter qualifies for the exception under Pre-AIA 35 U.S.C. 103(c).
- The ownership or obligation of assignment must exist at the moment of invention, not at a later date.
- Any changes in ownership or assignment obligations after the invention was made do not retroactively qualify the subject matter for the exception.
Examiners and applicants must carefully consider the timing of ownership or assignment obligations in relation to the invention date when applying or responding to rejections under Pre-AIA 35 U.S.C. 103(c). This phrase underscores the importance of maintaining clear records of invention dates and ownership/assignment histories in patent prosecution.
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