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

pre-AIA 35

U.S.C. 102(a)

and

102(b)

and

35 U.S.C.

102(a)(1)

as of its patent application publication date because

the patent application publication is considered to be a “printed” publication within

the meaning of

pre-AIA

35 U.S.C. 102(a)

and

102(b)

and

35 U.S.C.

102(a)(1)

, 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)

of an application

that has become abandoned may be available as prior art under

pre-AIA 35 U.S.C.

102(e)

as of the earliest effective U.S. filing date of the

published application and may be available under

35 U.S.C.

102(a)(2)

as of the date it was effectively filed. 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

pre-AIA 35 U.S.C.

102(a)

or

102(b)

or

35 U.S.C.

102(a)(1)

as of the date the information became publicly

available.

Where an unpublished abandoned application is identified or whose

benefit is claimed in a U.S. patent, a statutory invention registration, a U.S. patent

application publication, or an international patent application publication of an

international application that was published in accordance with

PCT Article 21(2)

,

the file contents of the unpublished abandoned application may be made available to the

public. See

37 CFR

1.14(a)(1)(iv)

n is identified or whose

benefit is claimed in a U.S. patent, a statutory invention registration, a U.S. patent

application publication, or an international patent application publication of an

international application that was published in accordance with

PCT Article 21(2)

,

the file contents of the unpublished abandoned application may be made available to the

public. See

37 CFR

1.14(a)(1)(iv)

. Subject matter from abandoned applications which

is available to the public under

37 CFR 1.14

may be used as prior art

against a pending U.S. application under

pre-AIA 35 U.S.C. 102(a)

or

102(b)

or

35 U.S.C. 102(a)(1)

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. See

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

,

subsection I.

Published abstracts, abbreviatures, defensive publications

(

MPEP §

901.06(d)

), and statutory invention registrations

(

MPEP Chapter

1100

) are references.