Question Regarding Prior Art via Admission

[PatentlyUsernam]

What is the name of your state? NY

This is a question about a reference being assumed to be prior art by the examiner because of an admission by the practitioner of the reference as being prior art. In the MPEP, it clearly says that references which the practitioner acknowledges as prior art, are to be accepted by the examiner as prior art (unless the author of the reference was not created by another).

Does the prior art via admission only apply when it is unclear whether the reference can be prior art? The MPEP does not mention whether a practitioner's admission of a reference as prior art, would be accepted as prior art by the examiner, even when it is clear that the reference is not prior art. (Such as admitting a patent to be prior art when the patent has a filing date after your patent's filing date)? Is the lack of discussion in the MPEP an indication that it does not matter?

Or, is the prior art via admission really directed to issues where references are arguably not analagous (instead of issues where references arguably do not pre-date the patent's filing date)?

Thank you.
PatentlyUsernam

 

[divgradcurl]

Does the prior art via admission only apply when it is unclear whether the reference can be prior art?

No. The admission will be accepted even if it is clear that the reference is NOT prior art under 35 U.S.C. 102 or 103.

Remember that a filing date of a patent is presumed to be the "invention" date, but you have a year to file after the first public disclosure. So, it's possible that another invented something, disclosed it, and then waited a year to file it. If you knew about the disclosure, and you filed a patent on a related invention before the original guy filed his, the original guy's patent can't be 102 or 103 prior art, because your filing date predates his -- but since you knew about the invention prior to your filing, you are obligated to disclose what you know, so your admission makes the invention prior art, even if it otherwise wouldn't be under 102 or 103.

That's the siutation this section is intended to cover.

Another possibility is if an inventor knew that someone else had invented something that would be prior art, but had never bothered to patent it or published anything about it. Again, the applicant is obligated to disclose what they know, and in this case, the disclosure would be accepted as prior art, even though there are no publications or applications to create 102 or 103 art.

The MPEP is pretty clear on this point:

"A statement by an applicant >in the specification or made< during prosecution identifying the work of another as "prior art" is an admission **>which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. " MPEP 2129 (emphasis added)