706.02(c)    Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or Sale [R-07.2015]

An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others.

Note that as an aid to resolving public use or on sale issues, as well as to other related matters of pre-AIA 35 U.S.C. 102(b)  activity, an applicant may be required to answer specific questions posed by the examiner and to explain or supplement any evidence of record. See 35 U.S.C. 132  and 37 CFR 1.104(a)(2). Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. The examiner may consider making a requirement for information under 37 CFR 1.105  where the evidence of record indicates reasonable necessity. See MPEP § 704.10 et seq.

A 2-month time period should be set by the examiner for any reply to the requirement, unless the requirement is part of an Office action having a shortened statutory period, in which case the period for reply to the Office action will also apply to the requirement. If applicant fails to reply in a timely fashion to a requirement for information, the application will be regarded as abandoned. 35 U.S.C. 133. See MPEP § 2133.03.

If there is not enough information on which to base a public use or on sale rejection, the examiner should make a requirement for more information. Form paragraph 7.104.aia. or 7.104.fti can be used.

¶ 7.104.aia    Requirement for Information, Public Use or Sale or Other Public Availability

An issue of public use, on sale activity, or other public availability has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under 35 U.S.C. 102(a)(1), additional information regarding this issue is required as follows: [1]

Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103  as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.

3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03.

4. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.

5. If sufficient evidence already exists to establish a prima facie case of public use, sale, or other public availability use form paragraph 7.16.aia to make a rejection under 35 U.S.C. 102(a)(1). See MPEP § 2133.03.

¶ 7.104.fti    Requirement for Information, Public Use or Sale

An issue of public use or on sale activity has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under pre-AIA 35 U.S.C. 102(b), additional information regarding this issue is required as follows: [1]

Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.

2. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03.

3. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having an SSP, in which case the SSP will apply also to the requirement.

4. If sufficient evidence already exists to establish a prima facie case of public use or on sale, use form paragraph 7.16.fti to make a rejection under pre-AIA 35 U.S.C. 102(b). See MPEP § 2133.03.

706.02(c)(1)    Rejections under 35 U.S.C. 102(a)(1); Public Use or Public Sale [R-11.2013]

[Editor Note: This MPEP section is only 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)(2) for the examination of applications not subject to the first inventor to file provisions of the AIA involving public use or public sale.]

Public use and on sale rejections under 35 U.S.C. 102(a)(1)  may be based on uses and sales from anywhere in the world. The uses and on sale activities must be "public." Secret commercial sales should not be applied as "on sale" prior art under 35 U.S.C. 102(a)(1). See MPEP § 2152.02(d). While there is no requirement that the use or sale activity be by another, it should be noted that certain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with the inventor), that precede the effective filing date by less than one year. See MPEP § 2154.02.

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).