The New USPTO Examiner Manual And 102(e) Prior Art

By Eric Steffe and David Holman (March 9, 2018, 2:22 PM EST) -- Recent Federal Circuit decisions have held that, for a published patent application to qualify as §102(e) prior art as of its provisional application filing date, the provisional application must (1) support the relied upon disclosures in the published application and (2) provide §112, first paragraph, support for the claims in the published application. Consistent with the Federal Circuit precedent, the Patent Trial and Appeal Board has applied this §102(e) analysis to both patents and published patent applications. The U.S. Patent and Trademark Office's January 2018 updates to the Manual of Patent Examining Procedure, however, seem to provide guidance for examiners that is at odds with the Federal Circuit and PTAB precedent. This article discusses the history of the Wertheim doctrine, Dynamic Drinkware and other recent Federal Circuit decisions, how §102(e) prior art has been treated at the PTAB, and as-yet unanswered questions involving the Wertheim doctrine....

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