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2134    Pre-AIA 35 U.S.C. 102(c)

 This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY

This section discusses pre-AIA 35 U.S.C. 102(c) which states that a person shall be entitled to a patent unless he has abandoned the invention. Under 35 U.S.C. 102(c), an abandonment must be intentional.

This section also discusses considerations in a delay in making the first application, a delay in reapplying for patent after abandonment of previous patent application, and disclosure without claiming in a prior issued patent. Lastly, the mere lapse of time will not bar a patent.

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Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

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(c) he has abandoned the invention.

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I.   UNDER 35 U.S.C. 102(c), AN ABANDONMENT MUST BE INTENTIONAL

“Actual abandonment under pre-AIA 35 U.S.C. 102(c) requires that the inventor intend to abandon the invention, and intent can be implied from the inventor’s conduct with respect to the invention.

  • Such intent to abandon the invention will not be imputed, and every reasonable doubt should be resolved in favor of the inventor.”


II.   DELAY IN MAKING FIRST APPLICATION

Abandonment under pre-AIA 35 U.S.C. 102(c) requires a deliberate, though not necessarily express, surrender of any rights to a patent.

  • To abandon the invention the inventor must intend a dedication to the public.
  • Such dedication may be either express or implied, by actions or inactions of the inventor.
  • Delay alone is not sufficient to infer the requisite intent to abandon.


III.   DELAY IN REAPPLYING FOR PATENT AFTER ABANDONMENT OF PREVIOUS PATENT APPLICATION

Where there is no evidence of expressed intent or conduct by inventor to abandon his invention, delay in reapplying for patent after abandonment of a previous application does not constitute abandonment under pre-AIA 35 U.S.C. 102(c).


IV.   DISCLOSURE WITHOUT CLAIMING IN A PRIOR ISSUED PATENT

Any inference of abandonment (i.e., intent to dedicate to the public) of subject matter disclosed but not claimed in a previously issued patent is rebuttable by an application filed at any time before a statutory bar arises.

  • Accordingly, a rejection of a claim of a patent application under pre-AIA 35 U.S.C. 102(c) predicated solely on the issuance of a patent which discloses the subject matter of the claim in the application without claiming it would be improper, regardless of whether there is copendency between the application at issue and the application which issued as the patent.


V.   ONLY WHEN THERE IS A PRIORITY CONTEST CAN A LAPSE OF TIME BAR A PATENT

The mere lapse of time will not bar a patent.

The only exception is when there is a priority contest under pre-AIA 35 U.S.C. 102(g) and applicant abandons, suppresses or conceals the invention.

  • Abandonment, suppression and concealment are treated by the courts under pre-AIA 35 U.S.C. 102(g).

 

» 2135 Pre-AIA 35 U.S.C. 102(d)