2138 Pre-AIA 35 U.S.C. 102(g)
This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
|
Section Frequency Chart
A person shall be entitled to a patent unless -
*****
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
Pre-AIA 35 U.S.C. 102(g) issues such as conception, reduction to practice and diligence, while more commonly applied to interference matters, also arise in other contexts.
Pre-AIA 35 U.S.C. 102(g) may form the basis for an ex parte rejection if:
- the subject matter at issue has been actually reduced to practice by another before the applicant’s invention; and
- there has been no abandonment, suppression or concealment.
To qualify as prior art under pre-AIA 35 U.S.C. 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient.
While the filing of an application for patent is a constructive reduction to practice, the filing of an application does not in itself provide the evidence necessary to show an actual reduction to practice of any of the subject matter disclosed in the application as is necessary to provide the basis for an ex parte rejection under pre-AIA 35 U.S.C. 102(g).
- Thus, absent evidence showing an actual reduction to practice (which is generally not available during ex parte examination), the disclosure of a United States patent application publication or patent falls under pre-AIA 35 U.S.C. 102(e) and not under pre-AIA 35 U.S.C. 102(g).
- In addition, subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(g) may also be the basis for an ex parte rejection under pre-AIA 35 U.S.C. 103.
Pre-AIA 35 U.S.C. 103(c), however, states that subsection (g) of pre-AIA 35 U.S.C. 102 will not preclude patentability where subject matter developed by another person, that would otherwise qualify under pre-AIA 35 U.S.C. 102(g), and the claimed invention of an application under examination were owned by the same person, subject to an obligation of assignment to the same person, or involved in a joint research agreement, which meets the requirements of pre-AIA 35 U.S.C. 103(c)(2) and (c)(3), at the time the invention was made.
