data/2100/s2134.html.txt

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# 2134 Pre-AIA 35 U.S.C. 102(c) [R-10.2019]


*[Editor Note: This MPEP section is **not applicable** to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA as
 set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is subject to
 examination under the FITF provisions, and **[MPEP §
 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to those
 provisions.]*


Under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)**, abandonment of the "invention" (as
 distinguished from abandonment of an application) results in loss of right to a patent.
 



#### *Pre-AIA 35 U.S.C. 102   
 Conditions for patentability; novelty and loss of right to patent.*


A person shall be entitled to a patent unless -


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* (c) he has abandoned the invention.


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**I.** **UNDER 35 U.S.C. 102(c), AN ABANDONMENT MUST BE INTENTIONAL**"Actual abandonment under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)** requires
 that the inventor intend to abandon the invention, and intent can be implied from the
 inventor’s conduct with respect to the invention. *In re Gibbs,*
 437 F.2d 486, 168 USPQ 578 (CCPA 1971). Such intent to abandon the invention will not be
 imputed, and every reasonable doubt should be resolved in favor of the inventor."
 *Ex parte Dunne,* 20 USPQ2d 1479 (Bd. Pat. App. & Inter.
 1991).
 

**II.** **DELAY IN MAKING FIRST APPLICATION**Abandonment under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)** requires a
 deliberate, though not necessarily express, surrender of any rights to a patent. To
 abandon the invention the inventor must intend a dedication to the public. Such
 dedication may be either express or implied, by actions or inactions of the inventor.
 *U.S. Rifle & Cartridge Co. v. Whitney Arms Co.,* 118 U.S. 22,
 25 (1886); *Consolidated Fruit–Jar Co. v. Wright,* 94 U.S. 92, 96
 (1876). Delay alone is not sufficient to infer the requisite intent to abandon.
 *Lovell v. Peer,* 148 F.2d 212, 214, 65 USPQ 127, 129 (CCPA 1945).
 See also *Moore v. United**States,* 194 USPQ 423, 428 (Ct. Cl. 1977) (The drafting and retention
 in his own files of two patent applications by inventor indicates an intent to retain
 his invention; delay in filing the applications was not sufficient to establish
 abandonment); but see *Davis Harvester Co., Inc. v. Long Mfg. Co.,* 252
 F. Supp. 989, 1009-10, 149 USPQ 420, 435-436 (E.D. N.C. 1966) (Where the inventor does
 nothing over a period of time to develop or patent his invention, ridicules the attempts
 of another to develop that invention and begins to show active interest in promoting and
 developing his invention only after successful marketing by another of a device
 embodying that invention, the inventor has abandoned his invention under
 **[pre-AIA 35 U.S.C.
 102(c)](mpep-9015-appx-l.html#d0e302383)**.).
 

**III.** **DELAY IN REAPPLYING FOR PATENT AFTER ABANDONMENT OF PREVIOUS PATENT
 APPLICATION**Where there is no evidence of expressed intent or conduct by inventor
 to abandon the invention, delay in reapplying for patent after abandonment of a previous
 application does not constitute abandonment under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)**.
 *Petersen v. Fee Int’l, Ltd.,* 381 F. Supp. 1071, 182 USPQ 264 (W.D.
 Okla. 1974).
 

**IV.** **DISCLOSURE WITHOUT CLAIMING IN A PRIOR ISSUED PATENT**Any inference of abandonment (i.e., intent to dedicate to the public)
 of subject matter disclosed but not claimed in a previously issued patent is rebuttable
 by an application filed at any time before a statutory bar arises. Accordingly, a
 rejection of a claim of a patent application under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)** predicated
 solely on the issuance of a patent which discloses the subject matter of the claim in
 the application without claiming it would be improper, regardless of whether there is
 copendency between the application at issue and the application which issued as the
 patent. *In re Gibbs,* 437 F.2d 486, 168 USPQ 578 (CCPA 1971).
 

**V.** **ONLY WHEN THERE IS A PRIORITY CONTEST CAN A LAPSE OF TIME BAR A PATENT**The mere lapse of time will not bar a patent. The only exception is
 when there is a priority contest under **[pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302383)** and
 applicant abandons, suppresses or conceals the invention. *Panduit Corp. v.
 Dennison Mfg.**Co.,* 774 F.2d 1082, 1101, 227 USPQ 337, 350 (Fed. Cir. 1985).
 Abandonment, suppression and concealment are treated by the courts under
 **[pre-AIA 35 U.S.C.
 102(g)](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2138.03](s2138.html#d0e207478)** for more information on
 this issue.
 


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