706.02(c) Rejections Under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or Sale
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Section Frequency Chart
Note that as an aid to resolving public use or on sale issues, as well as to other related matters of pre-AIA 35 U.S.C. 102(b) activity, an applicant may be required to answer specific questions posed by the examiner and to explain or supplement any evidence of record.
- Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability.
- The examiner may consider making a requirement for information where the evidence of record indicates reasonable necessity.
A 2-month time period should be set by the examiner for any reply to the requirement, unless the requirement is part of an Office action having a shortened statutory period, in which case the period for reply to the Office action will also apply to the requirement.
- If applicant fails to reply in a timely fashion to a requirement for information, the application will be regarded as abandoned.
- If there is not enough information on which to base a public use or on sale rejection, the examiner should make a requirement for more information.
706.02(c)(1) Rejections under 35 U.S.C. 102(a)(1); Public Use or Public Sale
This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA.
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Public use and on sale rejections under 35 U.S.C. 102(a)(1) may be based on uses and sales from anywhere in the world. The uses and on sale activities must be "public."
Secret commercial sales should not be applied as "on sale" prior art under 35 U.S.C. 102(a)(1).
- While there is no requirement that the use or sale activity be by another, it should be noted that certain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with the inventor), that precede the effective filing date by less than one year.
706.02(c)(2) Rejections under pre-AIA 35 U.S.C. 102(a) and (b); Public Use or On Sale
This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA.
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The language "in this country" in pre-AIA 35 U.S.C. 102(a) and (b) means in the United States only and does not include other WTO or NAFTA member countries.
- In these cases the examiner must determine if pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b) applies.
If the activity is by an entity other than the inventors or assignee, such as sale by another, manufacture by another or disclosure of the invention by applicant to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable.
- If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies.
- However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that applicant made the invention and only disclosed it to others within the year prior to the effective filing date.
Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of the application.
