Patent Education Series

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901 Prior Art

MPEP SECTION SUMMARY

This section briefly covers the basis of proper prior art references including canceled matter, copending abandoned applications, and foreign patents.

Section Frequency Chart

Key

901

901.01

901.02

901.05

901.01 Canceled Matter in U.S. Patent Files

MPEP SECTION SUMMARY

Canceled matter in the application file of a U.S. patent or U.S. application publication is not a proper reference as of the filing date under pre-AIA 35 U.S.C. 102(e). However, matter canceled from the application file wrapper of a U.S. patent or U.S. application publication may be used as prior art as of the patent or publication date, respectively, in that it then constitutes prior public knowledge or prior public availability under pre-AIA 35 U.S.C. 102(a) or 35 U.S.C. 102(a)(1).

901.01(a) Ordering of Patented and Abandoned Provisional and Nonprovisional Application Files

MPEP SECTION SUMMARY

In the examination of an application, it is sometimes necessary to inspect the application papers of some previously abandoned application (provisional or nonprovisional) or granted patent. This is always true in the case of a reissue application and reexamination proceeding.

901.02 Abandoned Applications

MPEP SECTION SUMMARY

This section covers abandoned applications as prior art. Many abandoned applications that were previously published will be available as prior art as of its application publication date. This section covers the further details on abandoned applications.

If an abandoned application was previously published under 35 U.S.C. 122(b), that patent application publication is available as prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of its patent application publication date because the patent application publication is considered to be a “printed” publication within the meaning of pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1), even though the patent application publication is disseminated by the U.S. Patent and Trademark Office (Office) using only electronic media.

Additionally, a patent application publication published under 35 U.S.C. 122(b) of an application that has become abandoned may be available as prior art under pre-AIA 35 U.S.C. 102(e) as of the earliest effective U.S. filing date of the published application and may be available under 35 U.S.C. 102(a)(2) as of the date it was effectively filed.

901.03 Pending Applications

MPEP SECTION SUMMARY

This section covers pending applications as prior art. Generally, pending, unpublished U.S. applications are not available as prior art references. Further details on pending applications are covered here.

Pending U.S. applications which have not been published are generally preserved in confidence (37 CFR 1.14(a)) and are not available as references.

However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity.

The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant.

An application shall not be published if it is:

(A) no longer pending;
(B) subject to a secrecy order, that is, publication or disclosure of the application would be detrimental to national security;
(C) a provisional application;
(D) an application for a design patent;
(E) an application for an International design application; or
(F) a reissue application.

An application shall not be published if an applicant submits at the time of filing of the application a request for nonpublication.

901.05 Foreign Patent Documents

MPEP SECTION SUMMARY

All foreign patents, published applications, and any other published derivative material containing portions or summaries of the contents of published or unpublished patents (e.g., abstracts) which have been disseminated to the public are available to U.S. examiners.

In general, pending applications are confidential until a certain stage in the proceedings (e.g., upon patent grant), or until a certain date (e.g., 18 months after filing), as may be specified in a particular law.

901.06 Nonpatent Publications

MPEP SECTION SUMMARY

All printed publications may be used as references, the date to be cited being the publication date.

901.06(d) Abstracts, Abbreviatures, and Defensive Publications

MPEP SECTION SUMMARY

Abstracts and Abbreviatures are U.S. Patent and Trademark Office publications of abandoned applications.

Defensive Publications (the O.G. defensive publication and search copy) are U.S. Patent and Trademark Office publications of provisionally abandoned applications wherein the applicant retains his or her rights to an interference for a limited time period of 5 years from the earliest effective U.S. filing date.