MPEP 706.02(c)(2)
Rejections under Pre-AIA 35 U.S.C. 102(a) and (b); Public Use or On Sale

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

Previous: §706.02(c)(1) | Next: §706.02(d)

706.02(c)(2)    Rejections under Pre-AIA 35 U.S.C. 102(a) and (b); Public Use or On Sale [R-11.2013]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(c)(1) for the examination of applications subject to the first inventor to file provisions of the AIA involving public use or public sale.]

The language "in this country" in pre-AIA 35 U.S.C. 102(a) and (b) means in the United States only and does not include other WTO or NAFTA member countries. In these cases the examiner must determine if pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b) applies. See MPEP § 2133.03 for a discussion of case law treating the "public use" and "on sale" statutory bars.

If the activity is by an entity other than the inventors or assignee, such as sale by another, manufacture by another or disclosure of the invention by applicant to another then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that applicant made the invention and only disclosed it to others within the year prior to the effective filing date.

Pre-AIA 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of the application. See MPEP § 2133.03 for a discussion of "on sale" and "public use" bars under pre-AIA 35 U.S.C. 102(b).