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901.02 Abandoned Applications - 900 Prior Art, Classification, Search
901.02 Abandoned Applications
If an abandoned application was previously published under 35 U.S.C. 122(b), that patent application publication is available as prior art under 35 U.S.C. 102(a) and 102(b) as of its patent application publication date because the patent application publication is considered to be a "printed" publication within the meaning of 35 U.S.C. 102(a) and 102(b), even though the patent application publication is disseminated by the U.S. Patent and Trademark Office (Office) using only electronic media. See MPEP § 2128. Additionally, as described in MPEP § 901.03, a patent application publication published under 35 U.S.C. 122(b) is available as prior art under 35 U.S.C. 102(e) as of the earliest effective U.S. filing date of the published application against U.S. applications filed on or after November 29, 2000 and applications filed prior to November 29, 2000 which are voluntarily published. As provided in 37 CFR 1.11(a), unless a redacted copy of the application was used for the patent application publication, the specification, drawings, and all papers relating to the file of an abandoned published application are open to inspection by the public, and copies may be obtained from the Office. The information that is available to the public under 37 CFR 1.11(a) may be used as prior art under 35 U.S.C. 102(a) or 102(b) as of the date the information became publicly available.
Where an abandoned application is referred to in an issued U.S. patent or in one of the types of published or publicly available patent applications described in 37 CFR 1.14(e), access to the abandoned application file may be provided to the public. See 37 CFR 1.14 (e)(2). Similarly, a copy of the application-as-filed and/or a copy of the file wrapper and its contents may be publicly available. See 37 CFR 1.14(c). Subject matter from abandoned applications which is available to the public under 37 CFR 1.14(c) or 37 CFR 1.14(e) may be used as prior art against a pending U.S. application under 35 U.S.C. 102(a) or 102(b) as of the date the subject matter became publicly available.
In re Heritage, 182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and relies on the disclosure of a previously copending but subsequently abandoned application, such disclosure is available as a reference. See also In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967).
It has also been held that where the reference patent refers to a previously copending but subsequently abandoned application which discloses subject matter in common with the patent, the effective date of the reference as to the common subject matter is the filing date of the abandoned application. In re Switzer, 166 F.2d 827, 77 USPQ 156 (CCPA 1948); Ex parte Peterson, 63 USPQ 99 (Bd. App. 1944); and Ex parte Clifford, 49 USPQ 152 (Bd. App. 1940). See MPEP § 2127(a).
Published abstracts, abbreviatures, defensive publications ( MPEP § 901.06(d)), and statutory invention registrations ( MPEP Chapter 1100) are references.
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