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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This section covers whether to apply 35 U.S.C. 102(a)(1) or 102(a)(2). 35 U.S.C. 102(a) reads (a) Novelty; Prior Art.— A person shall be entitled to a patent unless—
I. 35 U.S.C. 102(a)(1)
Patents claiming or describing the claimed inventions, descriptions of the claimed invention in a printed publication, public use of the claimed invention, placing the claimed invention on sale, and otherwise making the claimed invention available to the public qualify as prior art under 35 U.S.C. 102(a)(1) if the reference predates the effective filing date of the claim.
- The sale or use of the invention need not occur in the United States to qualify.
Potential references may be disqualified as prior art under 35 U.S.C. 102(b)(1)(A) when the inventor's own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made:
- One year or less before the effective filing date of the claimed invention; and
- By the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
Potential references may also be disqualified as prior art under 35 U.S.C. 102(b)(1)(B) if the reference discloses subject matter that was publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
Specifically, 35 U.S.C. 102(b)(1)(B) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) (patent, printed publication, public use, sale, or other means of public availability) may be disqualified as prior art if:
- The disclosure was made one year or less before the effective filing date of the claimed invention; and
- The subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
II. 35 U.S.C. 102(a)(2)
U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the filing or effective filing date of the disclosure of the reference is before the effective filing date of the claimed invention.
Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim.
35 U.S.C. 102(d) sets forth the criteria to determine when subject matter described in a U.S. patent, U.S. patent application publication, or WIPO published application was “effectively filed” for purposes of 35 U.S.C. 102(a)(2).
Potential references may be disqualified as prior art under 35 U.S.C. 102(a)(2) by the three exception provisions of 35 U.S.C. 102(b)(2).
- 35 U.S.C. 102(b)(2)(A) limits the use of an inventor's own work as prior art, when the inventor's own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
- 35 U.S.C. 102(b)(2)(B) disqualifies subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
- 35 U.S.C. 102(b)(2)(C) disqualifies subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.”
