MPEP 2154.02(a)
Prior Art Exception Under AIA

This is the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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2154.02(a)    Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception) [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (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.]

AIA 35 U.S.C. 102(b)(2)(A) provides an exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2). This exception 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 (“U.S. patent document”) by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.

Specifically, AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) may be disqualified as prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Thus, if the subject matter in a U.S. patent document upon which the rejection is based is by another who obtained the subject matter from the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2). MPEP § 2155.03 discusses the use of affidavits or declarations to show that the disclosure was by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(2)(A) for an inventor-originated disclosure.