2138.02 “The Invention Was Made in This Country”
This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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An invention is made when there is a conception and a reduction to practice.
- Prior art under pre-AIA 35 U.S.C. 102(g) is limited to an invention that is made.
The publication of an article, alone, is not deemed a constructive reduction to practice, and therefore its disclosure does not prove that any invention within the meaning of pre-AIA 35 U.S.C. 102(g) has ever been made.
Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.
- "If the invention is reduced to practice in a foreign country and knowledge of the invention was brought into this country and disclosed to others, the inventor can derive no benefit from the work done abroad and such knowledge is merely evidence of conception of the invention”.
In accordance with pre-AIA 35 U.S.C. 102(g)(1), a party involved in an interference proceeding under pre-AIA 35 U.S.C. 135 or 291 may establish a date of invention under pre-AIA 35 U.S.C. 104.
- Pre-AIA 35 U.S.C. 104, as amended by GATT and NAFTA, provides that an applicant can establish a date of invention in a NAFTA member country on or after December 8, 1993 or in WTO member country other than a NAFTA member country on or after January 1, 1996.
- Accordingly, an interference count may be won or lost on the basis of establishment of invention by one of the parties in a NAFTA or WTO member country, thereby rendering the subject matter of that count unpatentable to the other party under the principles of res judicata and collateral estoppel, even though such subject matter is not available as statutory prior art under pre-AIA 35 U.S.C. 102(g).
» 2138.03 “By Another Who Has Not Abandoned, Suppressed, or Concealed It”
