Category: FITF

The effectively filed date of subject matter in a U.S. patent or published application as prior art under 35 U.S.C. 102(a)(2) is the earlier of:

1) the actual filing date of the U.S. patent or published application being used as the reference
or
2) the filing date of the earliest application to which the U.S. patent or published application being used as the reference is entitled to claim a right of foreign priority or domestic benefit which describes the subject matter.

Jackson’s patent application publication is being considered as possible prior art against claims in an AIA application.

Jackson’s prior art patent application publication was effectively filed on June 5, 2011, which is the filing date of the foreign priority application.

The grace period is the one year time period before the effective filing date of the claimed invention, which can be the foreign priority filing date.

The concept of a grace period is taken from the language of 35 U.S.C. 102(b)(1) which defines exceptions to public disclosures as set forth in 35 U.S.C. 102(a)(1).

The effective filing date of a claimed invention in an AIA application (other than reissue applications) is the earlier of:

(1) the actual filing date of the application
or
(2) the filing date of the earliest application for which the application is entitled, as to such invention, to a right of foreign priority or the domestic benefit of an earlier filing date.

Effective filing date for Taylor’s invention X is July 1, 2013, which is the filing date of the foreign priority application

The claimed invention is the subject matter defined by a claim in a patent or an application for a patent.

A joint research agreement is defined as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

Joint research agreements are relevant to exceptions to 102(a)(2) disclosures as set forth in 102(b)(2)(C).

“Inventor” and “Applicant” are no longer synonymous under the AIA.

The term “Applicant” can include inventor(s), assignee(s), or others with a proprietary interest.

When considering a prior art or a double patenting rejection, an examiner should remember that someone listed as an applicant is not necessarily an inventor.

“Inventor” is defined as the individual or, if a joint
invention, the individuals collectively who invented or
discovered the subject matter of the invention.
– The terms “inventive entity” and “inventorship” are not
statutory terms, but have the same meaning as the
term “inventor”.

“Joint inventor” and “co-inventor” are both defined as any
one of the individuals who invented or discovered the
subject matter of a joint invention.