Q: What are the requirements for filing a priority claim and certified copy of a foreign application?

According to 37 CFR 1.55(g)(1) , the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states: "The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application." This requirement applies to all applications and ensures that priority claims are properly documented before the application is granted. To learn more: foreign priority certified copy patent application pendency

Question 1

How can I search for patent assignment records online?

Accepted Answer

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, 'Assignment records, digests, and indexes are available in the public search room of the USPTO.' To search online:

Visit the USPTO Patent Assignment Search page
Enter relevant information such as patent number, assignee name, or assignor name
Review the search results for the desired assignment information

The MPEP states, 'The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).'

Question 2

How does the 'two-way test' apply to genus-species inventions?

Accepted Answer

How does the 'two-way test' apply to genus-species inventions?

The 'two-way test' is a critical concept in evaluating genus-species inventions for patentability. According to MPEP 715.02:

'The disclosure of a species in a reference is not necessarily a constructive reduction to practice of the genus.'

This means that showing a specific example (species) in a prior art reference doesn't automatically disqualify a broader claim (genus) from patentability. The two-way test involves:

Species to Genus: Does the species disclosure in the reference enable one skilled in the art to make the genus?
Genus to Species: Would the genus disclosure in the application enable one skilled in the art to make the species?

If both questions are answered affirmatively, the genus claim may be anticipated by the species disclosure. However, if either answer is negative, the genus claim may still be patentable over the species disclosure.

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Question 3

How does the "materially narrowed" test apply in patent reissue recapture analysis?

Accepted Answer

How does the "materially narrowed" test apply in patent reissue recapture analysis?

The "materially narrowed" test is a crucial part of the third step in the recapture analysis for patent reissue applications. It determines whether the reissue claims have avoided recapture by including a materially narrowing limitation relative to the original claims.

According to MPEP 1412.02(II)(C):

"The materially narrowing must relate to what was amended or argued by applicant in the original application, to define the claim over the art."

To apply this test:

Compare the reissue claim to the original patent claim it replaced
Identify the broadening aspect (what limitation was eliminated or broadened)
Determine if the reissue claim includes a limitation that narrows the claim relative to the original broadening
Assess if the narrowing is material, i.e., it relates to the prior art rejections or arguments made during original prosecution

If the reissue claim is materially narrowed relative to the original claims, recapture may be avoided even if some broadening has occurred.

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Question 4

What are the requirements for the certified copy of the foreign priority application?

Accepted Answer

A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.

The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP § 215.

A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP § 215.01.

An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP § 215.02(b).

Question 5

What happens if a viability test indicates that a biological deposit is not viable?

Accepted Answer

If a viability test indicates that a biological deposit is not viable, the patent examination process is affected. According to MPEP 2409 and 37 CFR 1.807(c):

"If a viability test indicates that the deposit is not viable upon receipt, or the examiner cannot, for scientific or other valid reasons, accept the statement of viability received from the applicant, the examiner shall proceed as if no deposit has been made."

In such cases, the examiner will notify the applicant, stating the reasons for not accepting the viability statement. The examination process will then continue as if no deposit had been made, which may affect the application's compliance with the requirements under 35 U.S.C. 112 for enablement and written description.

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Question 6

What are the requirements for filing a priority claim and certified copy of a foreign application?

Accepted Answer

According to 37 CFR 1.55(g)(1), the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states:

"The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application."

This requirement applies to all applications and ensures that priority claims are properly documented before the application is granted.

To learn more:

Question 7

What is the deadline for submitting a certified copy of a foreign priority application?

Accepted Answer

The deadline for submitting a certified copy of a foreign priority application depends on the filing date of the U.S. application. According to MPEP 213.02:

In the case of a U.S. application filed on or after March 16, 2013, the certified copy must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.

If the certified copy is not filed within this timeframe, the applicant must file a petition to accept a delayed submission and pay the associated fee.

To learn more:

Question 8

What is the "visual impression" test for design patents?

Accepted Answer

What is the "visual impression" test for design patents?

The "visual impression" test is an important consideration in design patent examination. According to MPEP 1504.04:

"In determining whether a design is primarily functional or primarily ornamental, it is necessary to consider the design as a whole, i.e., the impression of the design as it is viewed in its entirety, in determining whether the claimed design is dictated by the utilitarian purpose of the article."

This means that:

Examiners consider the overall visual impression of the design
The design is evaluated as a whole, not just individual elements
The test helps determine if the design is primarily ornamental or functional

When preparing your design patent application, consider how your design will be perceived as a whole to ensure it meets the ornamentality requirement.

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Question 9

What factors determine the level of ordinary skill in the art for patent enablement?

Accepted Answer

Determining the level of ordinary skill in the art is crucial for assessing patent enablement. MPEP 2164.05(b) provides guidance on this matter:

"The level of skill in the art is a factual determination that must be made on a case-by-case basis."

Factors that determine the level of ordinary skill in the art include:

Educational Background: The typical education level of practitioners in the field.
Work Experience: The amount and type of work experience common in the field.
Sophistication of the Technology: The complexity of the technology at issue.
Rapidity of Innovation: How quickly the field is evolving.
Specialized Skills: Any particular skills or knowledge required in the field.
Types of Problems Encountered: The nature of typical problems solved in the field.

Examiners consider these factors collectively to establish the level of ordinary skill, which in turn affects the assessment of whether the specification is enabling to those in the art.

To learn more:

Question 10

How is the level of skill in the art determined for enablement purposes?

Accepted Answer

The level of skill in the art is a crucial factor in determining enablement. According to MPEP 2164.05(a), "The relative skill of those in the art refers to the skill of those in the art in relation to the subject matter to which the claimed invention pertains at the time the application was filed."

This means that the level of skill is assessed based on what a person of ordinary skill in the art would have known at the time of filing. The MPEP further clarifies: "35 U.S.C. 112(a) requires the specification to be enabling only to a person 'skilled in the art to which it pertains, or with which it is most nearly connected.'"

Additionally, the MPEP states: "In general, the pertinent art should be defined in terms of the problem to be solved rather than in terms of the technology area, industry, trade, etc. for which the invention is used." This guidance helps in properly contextualizing the level of skill when assessing enablement.

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How can I search for patent assignment records online?

How does the ‘two-way test’ apply to genus-species inventions?

How does the “materially narrowed” test apply in patent reissue recapture analysis?

What are the requirements for the certified copy of the foreign priority application?

What happens if a viability test indicates that a biological deposit is not viable?

What are the requirements for filing a priority claim and certified copy of a foreign application?

What is the deadline for submitting a certified copy of a foreign priority application?

What is the “visual impression” test for design patents?

What factors determine the level of ordinary skill in the art for patent enablement?

How is the level of skill in the art determined for enablement purposes?