Law - Described in Published U.S. Patent Application

Under U.S. patent law, an invention claimed in a U.S. patent application filed on or after November 29, 2000, or an application which has been voluntarily published by the USPTO lacks novelty if the claimed invention was described in a published U.S. patent application by another that was filed in the U.S. prior to the date it was invented by the applicant for a patent. [35 U.S.C. 102(e)]. If an international (PCT) patent application designating the U.S. is published in the English language, that publication has the same effect as publication of the application by the USPTO.

Because the applicant's(s') filing date is initially presumed to be the date of invention, a rejection under 35 U.S.C. 102(e) may be overcome by proving a date of invention earlier than the filing date of the reference. However, the date of invention can only be carried back one year before the earliest U.S. filing date. A rejection under 35 U.S.C. 102(e) may also be overcome by proving that the invention described in the reference was not invented by "another," i.e., that the invention was invented by the same inventive entity as the current applicant(s).

The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP): (after PDF file downloads, scroll down to indicated section)

MPEP 2136 - 35 U.S.C. 102(e)
MPEP 2136.01 - Status of U.S. Application as a Reference
MPEP 2136.02 - Content of the Prior Art Available Against the Claims
MPEP 2136.03 - Critical Reference Date
MPEP 2136.04 - Different Inventive Entity; Meaning of "By Another"
MPEP 2136.05 - Overcoming a Rejection under 35 U.S.C. 102(e)
MPEP 706.02(f) - Provisional Rejection Under 35 U.S.C. 102(e); Reference is Copending U.S. Patent Application
MPEP 706.02(b) - Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent

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