MPEP § 2150 — Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America Invents Act
Ninth Edition, Revision 01.2024 · last revised R-11.2013
[Editor Note: See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
Continued Applicability of pre-AIA 35 U.S.C. 102 and 103: The Leahy-Smith America Invents Act (AIA) revised 35 U.S.C. 102 and thereby, the standard to determine what prior art is available during examination of an application. See Public Law 112-29, 125 Stat. 284 (2011). The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. Thus, any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the application is a pre-AIA (first to invent) application (hereinafter “pre-AIA application”)). Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application. Accordingly, even if a request for continued examination under 37 CFR 1.114 is filed on or after March 16, 2013, in an application that was filed before March 16, 2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103. Submission of an amendment including a claim that includes new matter on or after March 16, 2013, also does not affect an application’s status as a pre-AIA application. See 35 U.S.C. 132(a). Similarly, a PCT application filed under 35 U.S.C. 363 before March 16, 2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage under 35 U.S.C. 371 before or after March 16, 2013. Applications filed on or after March 16, 2013 are also subject to pre-AIA 35 U.S.C. 102 if the application has never contained a claim with an effective filing date on or after March 16, 2013 and has never claimed the benefit of an application that ever contained such a claim. MPEP §§ 2131-2138 provide examination guidance on the prior art available in the examination of applications subject to pre-AIA 35 U.S.C. 102.
Cited authority
- 2159 Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of the AIA
- 2131 Anticipation — Application of 35 U.S.C. 102
- 2138 Pre-AIA 35 U.S.C. 102(g)
- 35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent
- 35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter
- 35 U.S.C. 102 Conditions for patentability; novelty
- 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter
- 35 U.S.C. 371 National stage: Commencement
- 37 CFR 1.114 Request for continued examination
- 35 U.S.C. 132 Notice of rejection; reexamination
- 35 U.S.C. 363 International application designating the United States: Effect
Cited by
- 1440 Examination of Reissue Application
- 2103 Patent Examination Process
- 2111.01 Plain Meaning
- 2112 Requirements of Rejection Based on Inherency; Burden of Proof
- 2120 Rejection on Prior Art
- 2121.02 Compounds and Compositions — What Constitutes Enabling Prior Art
- 2124.01 Tax Strategies Deemed Within the Prior Art
- 2132 Pre-AIA 35 U.S.C. 102(a)
- 2132.01 Overcoming a Pre-AIA 35 U.S.C. 102(a) Rejection based on a Printed Publication or Patent
- 2133 Pre-AIA 35 U.S.C. 102(b)
- 2133.01 Rejections of Continuation-In-Part (CIP) Applications
- 2133.02 Rejections Based on Publications and Patents
- 2133.03(a) “Public Use”
- 2133.03(b) “On Sale”
- 2133.03(c) The “Invention”
- 2133.03(d) “In This Country”
- 2133.03(e) Permitted Activity; Experimental Use
- 2133.03(e)(1) Commercial Exploitation
- 2133.03(e)(2) Intent
- 2133.03(e)(3) “Completeness” of the Invention
- 2133.03(e)(4) Factors Indicative of an Experimental Purpose
- 2133.03(e)(5) Experimentation and Degree of Supervision and Control
- 2133.03(e)(6) Permitted Experimental Activity and Testing
- 2133.03(e)(7) Activity of an Independent Third Party Inventor
- 2134 Pre-AIA 35 U.S.C. 102(c)
- 2135 Pre-AIA 35 U.S.C. 102(d)
- 2135.01 The Four Requirements of Pre-AIA 35 U.S.C. 102(d)
- 2136 Pre-AIA 35 U.S.C. 102(e)
- 2136.01 Status of Unpublished or Published as Redacted U.S. Application as a Reference Under Pre-AIA 35 U.S.C. 102(e)
- 2136.02 Content of the Prior Art Available Against the Claims
- 2136.03 Critical Reference Date
- 2136.04 Different Inventive Entity; Meaning of “By Another”
- 2136.05 Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e)
- 2136.05(b) Showing The Reference Is Describing An Inventor's Or At Least One Joint Inventor's Own Work
- 2137 Pre-AIA 35 U.S.C. 102(f)
- 2139.02 Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e)
- 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103
- 2141.01 Scope and Content of the Prior Art
- 2141.01(a) Analogous and Nonanalogous Art
- 2141.02 Differences Between Prior Art and Claimed Invention
- 2141.03 Level of Ordinary Skill in the Art
- 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness
- 2143.01 Suggestion or Motivation To Modify the References
- 2143.02 Reasonable Expectation of Success Is Required
- 2144.08 Obviousness of Species When Prior Art Teaches Genus
- 2144.09 Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers)
- 2145 Consideration of Applicant’s Rebuttal Arguments and Evidence
- 2146 Pre-AIA 35 U.S.C. 103(c)
- 2146.01 Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c)
- 2146.02 Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c)
- 2146.03 Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c)
- 2146.03(a) Provisional Rejection (Obviousness) Under 35 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e)
- 2147 Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b)
- 2173.01 Interpreting the Claims
- 2173.02 Determining Whether Claim Language is Definite
- 2183 Making a Prima Facie Case of Equivalence
- 717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)