Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
" "Adapted For (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
" "Whereby (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
" "Wherein (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
" And Contingent Clauses (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
Amounts (3)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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And Proportions (3)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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First And Second Paragraphs (1)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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Inequitable Conduct (1)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
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MPEP 101-General (2)
While the American Inventors Protection Act (AIPA) introduced the 18-month publication rule, there are several exceptions to this requirement. According to MPEP 901.03, an application shall not be published if it falls under any of the following categories:
- (A) no longer pending;
- (B) subject to a secrecy order under 35 U.S.C. 181;
- (C) a provisional application filed under 35 U.S.C. 111(b);
- (D) an application for a design patent filed under 35 U.S.C. 171;
- (E) an application for an International design application filed under 35 U.S.C. 382; or
- (F) a reissue application filed under 35 U.S.C. 251.
Additionally, an application will not be published if the applicant submits a request for nonpublication at the time of filing.
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The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:
- Obtain the caller’s full name, application number, and telephone number
- Verify the caller’s identity and authority to receive information
- Check Patent Data Portal or the application file to verify releasable information
- Return the call using a verified telephone number
Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.
MPEP 105 – Suspended or Excluded Practitioner Cannot Inspect (1)
Yes, there is one exception. A suspended or excluded patent attorney or agent can inspect an application if they are the inventor or applicant of that particular application. The MPEP clarifies:
USPTO employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it is one in which said attorney or agent is an inventor or the applicant.
So while suspended or excluded practitioners generally cannot inspect applications, they can still access ones in which they are directly involved as the inventor or applicant.
MPEP 120-Secrecy Orders (1)
Yes, an applicant can appeal a secrecy order issued on their patent application. According to MPEP 120, “An appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied.” This means that the applicant must first:
- Petition for rescission of the secrecy order
- If the petition is denied, then appeal to the Secretary of Commerce
The appeal process is governed by the provisions of 35 U.S.C. 181 and provides a mechanism for applicants to challenge the imposition of a secrecy order.
MPEP 130-Examination of Secrecy Order Cases (1)
If an examiner comes across a patent application that contains national security markings but does not have a Secrecy Order imposed, MPEP 130 instructs that “the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings.” This should be done preferably with the first office action and before final disposition of the application.
37 CFR 5.1(d) states that if no Secrecy Order has issued, the USPTO will set a time period for the applicant to take one of three actions to prevent abandonment:
- Obtain a Secrecy Order
- Declassify the application
- Submit evidence of a good faith effort to obtain a Secrecy Order under 37 CFR 5.2(a)
Additionally, per 37 CFR 5.1(e), “a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.”
MPEP 140-Foreign Filing Licenses (2)
Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
MPEP 200 – Types and Status of Application; Benefit and Priority (19)
A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:
- The filing date of the CPA request
- The parent application number
The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established.
Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.
For more information on USPTO filing procedures, visit: USPTO filing procedures.
A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.
According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.
This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on Patent Application Process, visit: Patent Application Process.
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on late submission, visit: late submission.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.
According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”
The petition to restore the right of priority must include:
- The priority claim identifying the prior foreign application
- The petition fee
- A statement that the delay in filing was unintentional
The USPTO may require additional information to establish that the delay was unintentional.
For more information on foreign priority, visit: foreign priority.
For more information on priority restoration, visit: priority restoration.
For more information on unintentional delay, visit: unintentional delay.
35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:
- National applications based on international applications
- International applications based on foreign applications
The MPEP states:
“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”
“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”
These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.
Can a divisional application be filed without a restriction requirement?
While divisional applications are typically filed in response to a restriction requirement, they can be filed voluntarily without one. The MPEP 201.06 states:
“A divisional application is often filed as a result of a restriction requirement made by the examiner.”
However, the use of “often” implies that this is not always the case. Applicants may choose to file a divisional application voluntarily if they:
- Recognize distinct inventions in their application
- Want to pursue different claim scopes separately
- Need to address potential unity of invention issues proactively
It’s important to note that voluntarily filing a divisional application without a restriction requirement may affect the application of the safe harbor provision under 35 U.S.C. 121, which protects against double patenting rejections in certain cases.
For more information on Divisional application, visit: Divisional application.
The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:
“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”
This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.
For more information on non-English language, visit: non-English language.
For more information on provisional application, visit: provisional application.
For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).
According to MPEP ¶ 2.34:
“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”
This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on CPA, visit: CPA.
For more information on specific reference, visit: specific reference.
Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:
- Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
- Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.
The MPEP explicitly states in MPEP ¶ 2.01:
“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”
This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).
For more information on Divisional application, visit: Divisional application.
For more information on patent law, visit: patent law.
For more information on provisional application, visit: provisional application.
For more information on USPTO, visit: USPTO.
Can a continuation-in-part application claim priority to a provisional application?
Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.
Key points to understand:
- Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
- New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
- One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
- Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.
Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.
For more information on new matter, visit: new matter.
For more information on provisional application, visit: provisional application.
A ‘bypass’ continuation application is a specific type of continuation application that is filed under 37 CFR 1.53(b) to ‘bypass’ the national stage of an international application. As explained in MPEP 201.06(c):
“A continuation application filed under 37 CFR 1.53(b) may be filed as a continuation of an international application designating the United States without entering the national stage under 35 U.S.C. 371. This is often referred to as a ‘bypass’ continuation application.”
This type of application allows applicants to pursue patent protection in the U.S. based on their international application without going through the formal national stage entry process. It can be advantageous in certain situations, such as when an applicant wants to modify claims or add new matter before U.S. examination.
English translations of non-English language foreign applications are not always required. However, 37 CFR 1.55(g)(3) specifies three situations where an English translation may be necessary:
“An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference or derivation proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.”
If a translation is required, it must be filed with a statement certifying that the translation is accurate. This ensures that the USPTO can properly evaluate the priority claim when necessary for examination or proceedings.
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Incorporating by reference in patent applications can have significant impacts:
- It allows applicants to include the content of another document without reproducing it in full.
- The incorporated material becomes part of the application as if it were explicitly included.
- It can provide support for claims and help meet disclosure requirements.
MPEP 211.05 mentions:
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.
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When claiming benefit to multiple prior applications, applicants must carefully establish a chain of copendency. The MPEP 211.01(b) provides guidance:
“The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.”
Key points to remember:
- References must be made in each intermediate application in the chain.
- A specific reference is required for each prior-filed application and cannot be incorporated by reference from a prior application.
- There is no limit to the number of prior applications through which a chain of copendency may be traced.
It’s crucial to properly reference all prior applications to ensure the desired benefit claims are recognized. Failure to do so may result in the need for a petition under 37 CFR 1.78 and payment of a petition fee.
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What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
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What is the significance of copendency in continuation applications?
Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’
The significance of copendency includes:
- Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
- Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
- Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.
Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.
For more information on continuation application, visit: continuation application.
For more information on copendency, visit: copendency.
For more information on patent priority, visit: patent priority.
A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.
While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].
CPAs allow applicants to:
- Continue prosecution of a previously filed design application
- Make amendments or corrections, such as deleting a named inventor
- Potentially receive further examination without filing a new application
For more detailed information on CPAs, refer to MPEP § 201.06(d).
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
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No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
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MPEP 200 – Types and Status of Application; Benefit and Priority Claims (10)
Claiming priority to a PCT international application can be done in two ways:
- In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
- In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)
In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
- An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
Yes, an abandoned application can still be used as a priority document for subsequent applications, provided that the priority claim is made within the specified time limits. The abandoned status of the earlier application does not affect its ability to serve as a basis for priority. For more information on priority claims, refer to MPEP 201 and MPEP 211.
If there’s an error in the preprinted prior application data, the following steps should be taken:
- If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
- After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
- If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
- In some cases, a petition for an unintentionally delayed benefit claim may also be required.
The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:
1. Continuations: A design application can be a continuation of a prior design application.
2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.
3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.
The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”
It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.
The front page of a patent includes the following information regarding foreign priority claims:
- The country of the foreign application
- The filing date of the foreign application
- The number of the foreign application
This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
Cross-noting in patent applications refers to the process of recording and verifying information about prior applications, including U.S. and foreign applications, for which benefit or priority is claimed. This information is typically noted on the bibliographic data (bib-data) sheet of the application and is used to ensure accurate representation of priority claims on the front page of a printed patent.
According to MPEP 202, “The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.”
Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:
- Claiming Priority:
- Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
- Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
- Governed by 37 CFR 1.55 for foreign priority claims
- Claiming Benefit:
- Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
- Typically used for continuation, divisional, or continuation-in-part applications
- Governed by 37 CFR 1.78
The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”
MPEP 2000 – Duty Of Disclosure (2)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
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Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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MPEP 2001.06 – Sources Of Information Under 37 Cfr 1.56 (1)
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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MPEP 201 – Types of Applications (11)
A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:
- The filing date of the CPA request
- The parent application number
The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established.
Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.
For more information on USPTO filing procedures, visit: USPTO filing procedures.
A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.
According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.
This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on Patent Application Process, visit: Patent Application Process.
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
- An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
Can a divisional application be filed without a restriction requirement?
While divisional applications are typically filed in response to a restriction requirement, they can be filed voluntarily without one. The MPEP 201.06 states:
“A divisional application is often filed as a result of a restriction requirement made by the examiner.”
However, the use of “often” implies that this is not always the case. Applicants may choose to file a divisional application voluntarily if they:
- Recognize distinct inventions in their application
- Want to pursue different claim scopes separately
- Need to address potential unity of invention issues proactively
It’s important to note that voluntarily filing a divisional application without a restriction requirement may affect the application of the safe harbor provision under 35 U.S.C. 121, which protects against double patenting rejections in certain cases.
For more information on Divisional application, visit: Divisional application.
For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).
According to MPEP ¶ 2.34:
“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”
This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on CPA, visit: CPA.
For more information on specific reference, visit: specific reference.
Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:
- Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
- Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.
The MPEP explicitly states in MPEP ¶ 2.01:
“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”
This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).
For more information on Divisional application, visit: Divisional application.
For more information on patent law, visit: patent law.
For more information on provisional application, visit: provisional application.
For more information on USPTO, visit: USPTO.
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:
1. Continuations: A design application can be a continuation of a prior design application.
2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.
3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.
The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”
It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.
Can a continuation-in-part application claim priority to a provisional application?
Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.
Key points to understand:
- Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
- New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
- One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
- Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.
Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.
For more information on new matter, visit: new matter.
For more information on provisional application, visit: provisional application.
A ‘bypass’ continuation application is a specific type of continuation application that is filed under 37 CFR 1.53(b) to ‘bypass’ the national stage of an international application. As explained in MPEP 201.06(c):
“A continuation application filed under 37 CFR 1.53(b) may be filed as a continuation of an international application designating the United States without entering the national stage under 35 U.S.C. 371. This is often referred to as a ‘bypass’ continuation application.”
This type of application allows applicants to pursue patent protection in the U.S. based on their international application without going through the formal national stage entry process. It can be advantageous in certain situations, such as when an applicant wants to modify claims or add new matter before U.S. examination.
What is the significance of copendency in continuation applications?
Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’
The significance of copendency includes:
- Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
- Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
- Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.
Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.
For more information on continuation application, visit: continuation application.
For more information on copendency, visit: copendency.
For more information on patent priority, visit: patent priority.
A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.
While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].
CPAs allow applicants to:
- Continue prosecution of a previously filed design application
- Make amendments or corrections, such as deleting a named inventor
- Potentially receive further examination without filing a new application
For more detailed information on CPAs, refer to MPEP § 201.06(d).
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
MPEP 2016 – Fraud (1)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
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MPEP 202-Cross-Noting (3)
If there’s an error in the preprinted prior application data, the following steps should be taken:
- If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
- After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
- If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
- In some cases, a petition for an unintentionally delayed benefit claim may also be required.
The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)
The front page of a patent includes the following information regarding foreign priority claims:
- The country of the foreign application
- The filing date of the foreign application
- The number of the foreign application
This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)
Cross-noting in patent applications refers to the process of recording and verifying information about prior applications, including U.S. and foreign applications, for which benefit or priority is claimed. This information is typically noted on the bibliographic data (bib-data) sheet of the application and is used to ensure accurate representation of priority claims on the front page of a printed patent.
According to MPEP 202, “The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.”
MPEP 203 – Status of Applications (1)
Yes, an abandoned application can still be used as a priority document for subsequent applications, provided that the priority claim is made within the specified time limits. The abandoned status of the earlier application does not affect its ability to serve as a basis for priority. For more information on priority claims, refer to MPEP 201 and MPEP 211.
MPEP 2100 – Patentability (68)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
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Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
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The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:
“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”
By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.
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MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
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The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
(MPEP 2112)
However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”
The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.
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Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
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What is the significance of drawings in proving conception for a patent?
Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:
“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“
In this context, drawings are significant because:
- They provide a visual representation of the inventor’s mental picture of the invention.
- Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
- Drawings can help prove that the invention was “ready for patenting” at the time of conception.
- They can serve as corroborating evidence to support the inventor’s testimony about conception.
The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.
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Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):
“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”
The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:
- A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
- A specific improvement to the way computers operate (Enfish)
- A particular method of incorporating virus screening into the Internet (Symantec Corp)
However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”
The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.
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The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:
“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”
This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.
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Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
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The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:
“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”
This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.
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MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
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AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
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The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:
- It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
- In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
- In Step 2B, it can contribute to the “significantly more” analysis.
- A particular machine can potentially transform an abstract idea into patent-eligible subject matter.
MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”
The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
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The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
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Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
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Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:
“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”
Antecedent basis serves several important functions:
- Ensures clarity and definiteness of claim terms
- Provides a link between the claims and the specification
- Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
- Facilitates proper interpretation of claim scope
To maintain proper antecedent basis:
- Introduce elements in the claims with “a” or “an”
- Refer back to previously introduced elements with “the” or “said”
- Ensure that all claim terms have support in the specification
By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.
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Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:
“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”
This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.
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According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance:
- Article: “An ‘article’ includes a physical object or substance.”
- Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.”
- Change: “‘Transformation’ of an article means that the ‘article’ has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article.”
The MPEP also notes: A new or different function or use can be evidence that an article has been transformed.
It’s important to note that purely mental processes or data manipulation are generally not considered eligible transformations: Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
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Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
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How does the USPTO handle situations where an incorrect inventor is named in a patent application?
The USPTO has several mechanisms to address situations where an incorrect inventor is named in a patent application. According to MPEP 2157:
- Derivation proceeding under 35 U.S.C. 135
- Correction of inventorship under 37 CFR 1.48
- Rejection under 35 U.S.C. 101 and 35 U.S.C. 115
The MPEP states: “A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“
The appropriate action depends on the specific circumstances of the case and when the error is discovered.
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While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
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Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
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Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
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The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
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The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
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In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
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In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:
“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”
To constitute a valid joint research agreement, the following elements must be present:
- Written agreement
- Signed by all parties
- Specification of the subject matter of the invention
- Indication of the field of the invention
- In effect as of the effective filing date of the claimed invention
It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.
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Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
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What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):
“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”
This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).
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The function-way-result test is a key aspect of determining equivalence under the doctrine of equivalents. MPEP 2186 references this test as follows:
“[A]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.”
This test evaluates whether a substitute element in an accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element in the patented invention.
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What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?
The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):
“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”
Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.
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According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP 2109
The MPEP further clarifies:
“[T]here is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
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When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
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Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):
“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”
This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
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While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:
- Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
- Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
- Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
- Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.
The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.
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The MPEP provides several examples of concepts and products that courts have identified as laws of nature or natural phenomena, which are not patentable. Some of these include:
- Isolated DNA
- Cloned farm animals
- Correlations between DNA variations and allele presence
- Metabolic correlations in the body
- Mathematical formulas (e.g., E=mc²)
- Electromagnetic signals
- Qualities of bacteria
- Single-stranded DNA fragments (primers)
- Chemical principles
- Cell-free fetal DNA in maternal blood
The MPEP Section 2106.04(b) states: “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter under Section 101. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity.”
These examples illustrate that naturally occurring phenomena and fundamental scientific principles are generally not eligible for patent protection.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s):
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.’”
The USPTO’s stance is based on the principle that claims should be self-contained and clearly define the invention without relying on external references. This approach ensures clarity and avoids potential ambiguity in interpreting the scope of the claims.
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35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(B): “excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(C): “excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, ‘were owned by the same person or subject to an obligation of assignment to the same person.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
Generally, the preamble limits the claim if:
- It recites essential structure or steps
- It’s necessary to give life, meaning, and vitality to the claim
- It’s used to define the scope of the claimed invention
As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”
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No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with this requirement.
According to the MPEP, “These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability.”
In essence, the utility requirement ensures that patented inventions are useful and serve a practical purpose.
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The “ready for patenting” requirement is the second prong of the Pfaff test for determining if an invention was “on sale” for the purposes of the on-sale bar. According to MPEP 2133.03(b), an invention is “ready for patenting” when either:
- The invention is reduced to practice; or
- The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.
This requirement ensures that the invention was sufficiently developed at the time of the offer for sale. It prevents inventors from claiming the on-sale bar doesn’t apply because the invention wasn’t complete, even if they were commercially exploiting the concept.
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
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The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02:
“If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well.”
By requiring disclosure of the best mode, the patent system prevents inventors from keeping their most valuable insights secret while still obtaining patent protection. This enhances the quality of information available to the public and other inventors, fostering further innovation in the field.
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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
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The standard for enablement in prior art references is consistent across all types of prior art, regardless of their origin or format. As stated in MPEP 2121:
“The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.”
An enabling disclosure in a prior art reference must describe the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. However, it’s important to note that:
“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”
This means that a prior art reference can be considered enabling even if it doesn’t prove that the described invention actually works, as long as it provides enough information for a skilled artisan to practice the invention.
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MPEP 2103 – Patent Examination Process (1)
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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MPEP 2106 – Patent Subject Matter Eligibility (2)
The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:
“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”
This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.
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The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
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MPEP 2106.04(A) – Abstract Ideas (3)
Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
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MPEP 2106.04(B) – Laws Of Nature (1)
The MPEP provides several examples of concepts and products that courts have identified as laws of nature or natural phenomena, which are not patentable. Some of these include:
- Isolated DNA
- Cloned farm animals
- Correlations between DNA variations and allele presence
- Metabolic correlations in the body
- Mathematical formulas (e.g., E=mc²)
- Electromagnetic signals
- Qualities of bacteria
- Single-stranded DNA fragments (primers)
- Chemical principles
- Cell-free fetal DNA in maternal blood
The MPEP Section 2106.04(b) states: “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter under Section 101. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity.”
These examples illustrate that naturally occurring phenomena and fundamental scientific principles are generally not eligible for patent protection.
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MPEP 2106.05 – Eligibility Step 2B: Whether A Claim Amounts To Significantly More (1)
Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):
“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”
The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:
- A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
- A specific improvement to the way computers operate (Enfish)
- A particular method of incorporating virus screening into the Internet (Symantec Corp)
However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”
The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.
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MPEP 2106.05(B) – Particular Machine (1)
The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:
- It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
- In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
- In Step 2B, it can contribute to the “significantly more” analysis.
- A particular machine can potentially transform an abstract idea into patent-eligible subject matter.
MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”
The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
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MPEP 2106.05(C) – Particular Transformation (1)
According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance:
- Article: “An ‘article’ includes a physical object or substance.”
- Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.”
- Change: “‘Transformation’ of an article means that the ‘article’ has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article.”
The MPEP also notes: A new or different function or use can be evidence that an article has been transformed.
It’s important to note that purely mental processes or data manipulation are generally not considered eligible transformations: Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
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MPEP 2107 – Guidelines For Examination Of Applications For Compliance With The Utility Requirement (1)
The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with this requirement.
According to the MPEP, “These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability.”
In essence, the utility requirement ensures that patented inventions are useful and serve a practical purpose.
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MPEP 2109 – Inventorship (1)
According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP 2109
The MPEP further clarifies:
“[T]here is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
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MPEP 211 – Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)
The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:
“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”
This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.
For more information on non-English language, visit: non-English language.
For more information on provisional application, visit: provisional application.
MPEP 2111.02 – Effect Of Preamble (1)
The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
Generally, the preamble limits the claim if:
- It recites essential structure or steps
- It’s necessary to give life, meaning, and vitality to the claim
- It’s used to define the scope of the claimed invention
As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”
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MPEP 2111.03 – Transitional Phrases (2)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
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Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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MPEP 2111.04 – "Adapted To (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
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MPEP 2112 – Requirements Of Rejection Based On Inherency; Burden Of Proof (1)
The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
(MPEP 2112)
However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”
The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.
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MPEP 2113 – Product – By – Process Claims (2)
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
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In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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MPEP 2114 – Apparatus And Article Claims — Functional Language (3)
MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
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MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
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In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
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MPEP 2121 – Prior Art; General Level Of Operability Required To Make A Prima Facie Case (1)
The standard for enablement in prior art references is consistent across all types of prior art, regardless of their origin or format. As stated in MPEP 2121:
“The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.”
An enabling disclosure in a prior art reference must describe the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. However, it’s important to note that:
“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”
This means that a prior art reference can be considered enabling even if it doesn’t prove that the described invention actually works, as long as it provides enough information for a skilled artisan to practice the invention.
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MPEP 213-Right of Priority of Foreign Application (5)
Claiming priority to a PCT international application can be done in two ways:
- In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
- In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)
In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).
An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.
According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”
The petition to restore the right of priority must include:
- The priority claim identifying the prior foreign application
- The petition fee
- A statement that the delay in filing was unintentional
The USPTO may require additional information to establish that the delay was unintentional.
For more information on foreign priority, visit: foreign priority.
For more information on priority restoration, visit: priority restoration.
For more information on unintentional delay, visit: unintentional delay.
35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:
- National applications based on international applications
- International applications based on foreign applications
The MPEP states:
“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”
“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”
These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
MPEP 2133.02 – Rejections Based On Publications And Patents (1)
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
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MPEP 2133.03(B) – "On Sale" (2)
Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
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The “ready for patenting” requirement is the second prong of the Pfaff test for determining if an invention was “on sale” for the purposes of the on-sale bar. According to MPEP 2133.03(b), an invention is “ready for patenting” when either:
- The invention is reduced to practice; or
- The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.
This requirement ensures that the invention was sufficiently developed at the time of the offer for sale. It prevents inventors from claiming the on-sale bar doesn’t apply because the invention wasn’t complete, even if they were commercially exploiting the concept.
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MPEP 2133.03(C) – The "Invention" (1)
Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
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MPEP 2136.02 – Content Of The Prior Art Available Against The Claims (2)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
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Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
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MPEP 2136.04 – Different Inventive Entity; Meaning Of "By Another" (1)
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
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MPEP 2138.04 – "Conception" (1)
What is the significance of drawings in proving conception for a patent?
Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:
“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“
In this context, drawings are significant because:
- They provide a visual representation of the inventor’s mental picture of the invention.
- Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
- Drawings can help prove that the invention was “ready for patenting” at the time of conception.
- They can serve as corroborating evidence to support the inventor’s testimony about conception.
The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.
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MPEP 2141 – Examination Guidelines For Determining Obviousness Under 35 U.S.C. 103 (1)
What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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MPEP 2141.01(A) – Analogous And Nonanalogous Art (1)
The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
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MPEP 2143 – Examples Of Basic Requirements Of A Prima Facie Case Of Obviousness (1)
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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MPEP 2144.05 – Obviousness Of Similar And Overlapping Ranges (3)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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MPEP 2146.02 – Establishing Common Ownership Or Joint Research Agreement Under Pre – Aia 35 U.S.C. 103(C) (1)
What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:
“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”
To constitute a valid joint research agreement, the following elements must be present:
- Written agreement
- Signed by all parties
- Specification of the subject matter of the invention
- Indication of the field of the invention
- In effect as of the effective filing date of the claimed invention
It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.
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MPEP 215-Certified Copy of Foreign Application (1)
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on late submission, visit: late submission.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
MPEP 2152.05 – Determining Whether To Apply 35 U.S.C. 102(A)(1) Or 102(A)(2) (1)
35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(B): “excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(C): “excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, ‘were owned by the same person or subject to an obligation of assignment to the same person.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
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MPEP 2154.01(B) – Determining When Subject Matter Was Effectively Filed Under Aia 35 U.S.C. 102(D) (1)
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
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MPEP 2157 – Improper Naming Of Inventors (1)
How does the USPTO handle situations where an incorrect inventor is named in a patent application?
The USPTO has several mechanisms to address situations where an incorrect inventor is named in a patent application. According to MPEP 2157:
- Derivation proceeding under 35 U.S.C. 135
- Correction of inventorship under 37 CFR 1.48
- Rejection under 35 U.S.C. 101 and 35 U.S.C. 115
The MPEP states: “A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“
The appropriate action depends on the specific circumstances of the case and when the error is discovered.
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MPEP 2163.03 – Typical Circumstances Where Adequate Written Description Issue Arises (2)
The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
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New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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MPEP 2163.04 – Burden On The Examiner With Regard To The Written Description Requirement (2)
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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MPEP 2163.07 – Amendments To Application Which Are Supported In The Original Description (1)
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
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MPEP 2164.02 – Working And Prophetic Examples (1)
While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:
- Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
- Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
- Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
- Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.
The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.
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MPEP 2164.04 – Burden On The Examiner Under The Enablement Requirement (1)
Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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MPEP 2164.08(B) – Inoperative Subject Matter (1)
The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):
“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”
This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.
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MPEP 2165.02 – Best Mode Requirement Compared To Enablement Requirement (2)
The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:
“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”
This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.
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The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02:
“If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well.”
By requiring disclosure of the best mode, the patent system prevents inventors from keeping their most valuable insights secret while still obtaining patent protection. This enhances the quality of information available to the public and other inventors, fostering further innovation in the field.
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MPEP 2172 – Subject Matter Which The Inventor Or A Joint Inventor Regards As The Invention (1)
What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
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MPEP 2173.02 – Determining Whether Claim Language Is Definite (1)
The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
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MPEP 2173.03 – Correspondence Between Specification And Claims (2)
Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:
“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”
Antecedent basis serves several important functions:
- Ensures clarity and definiteness of claim terms
- Provides a link between the claims and the specification
- Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
- Facilitates proper interpretation of claim scope
To maintain proper antecedent basis:
- Introduce elements in the claims with “a” or “an”
- Refer back to previously introduced elements with “the” or “said”
- Ensure that all claim terms have support in the specification
By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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MPEP 2173.04 – Breadth Is Not Indefiniteness (1)
The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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MPEP 2173.05(A) – New Terminology (1)
The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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MPEP 2173.05(E) – Lack Of Antecedent Basis (2)
“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):
“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”
This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).
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What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?
The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):
“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”
Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.
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MPEP 2173.05(H) – Alternative Limitations (1)
The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:
“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”
By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.
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MPEP 2173.05(Q) – "Use" Claims (1)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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MPEP 2173.05(S) – Reference To Figures Or Tables (1)
The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s):
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.’”
The USPTO’s stance is based on the principle that claims should be self-contained and clearly define the invention without relying on external references. This approach ensures clarity and avoids potential ambiguity in interpreting the scope of the claims.
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MPEP 2173.05(T) – Chemical Formula (1)
Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:
“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”
This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.
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MPEP 2174 – Relationship Between The Requirements Of 35 U.S.C. 112(A) And (B) Or Pre – Aia 35 U.S.C. 112 (1)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112 (1)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112(B) Or Pre – Aia 35 U.S.C. 112 (2)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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MPEP 2183 – Making A Prima Facie Case Of Equivalence (1)
Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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MPEP 2186 – Relationship To The Doctrine Of Equivalents (1)
The function-way-result test is a key aspect of determining equivalence under the doctrine of equivalents. MPEP 2186 references this test as follows:
“[A]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.”
This test evaluates whether a substitute element in an accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element in the patented invention.
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MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (3)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
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What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
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For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
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MPEP 2224 – Correspondence (1)
For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
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MPEP 2281 – Interviews In Ex Parte Reexamination Proceedings (1)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
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MPEP 2293 – Intervening Rights (1)
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
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MPEP 2300 – Interference And Derivation Proceedings (1)
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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MPEP 2304 – Suggesting An Interference (1)
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
To learn more:
MPEP 2400 – Biotechnology (3)
A Sequence Identifier (SEQ ID NO) is a unique number assigned to each disclosed nucleic acid and/or amino acid sequence in a patent application. According to MPEP 2422.01:
“37 CFR 1.821(d) and 37 CFR 1.823(a)(5) require that each disclosed nucleic acid and/or amino acid sequence in the application appear separately in the “Sequence Listing”, with each sequence further being assigned a sequence identifier, referred to as “SEQ ID NO:” or the like.“
Key points about Sequence Identifiers:
- They must begin with 1 and increase sequentially by integers.
- Each sequence must have a different number for identification.
- Sequences should be presented in numerical order in the “Sequence Listing” where practical.
- When discussing a sequence in the description or claims, a reference to its SEQ ID NO is required at all occurrences.
- SEQ ID NOs can be used to discuss or claim parts of a sequence (e.g., “residues 14 to 243 of SEQ ID NO:23”).
The use of SEQ ID NOs provides a shorthand way for applicants to discuss and claim their inventions without restricting how an invention can be claimed.
To learn more:
The case of Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990) is mentioned in MPEP 2410.01 in the context of biological material deposits. This case is significant because it reinforces the requirement that all restrictions on access to deposited biological material must be removed upon patent grant, with only the specific exception allowed under 37 CFR 1.808(b).
The MPEP cites this case to emphasize that compliance with the Budapest Treaty alone is not sufficient to meet all U.S. requirements for biological deposits. Specifically, the MPEP states: Consequently, the mere indication that a deposit has been made and accepted under conditions prescribed by the Budapest Treaty would satisfy all conditions of these regulations except the requirement that all restrictions on access be removed on grant of the patent. Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990).
To learn more:
Sequence identifiers (SEQ ID NOs) are crucial in patent applications containing nucleotide and/or amino acid sequences. According to MPEP 2421.02:
- Each disclosed nucleotide and/or amino acid sequence must be assigned a unique SEQ ID NO.
- SEQ ID NOs must be used to identify sequences in the specification, claims, and drawings.
- The SEQ ID NO should be placed adjacent to the sequence or used in a table correlating sequence names with their corresponding SEQ ID NOs.
The MPEP states: “The rules require that the sequence identifiers must be used in all instances where the sequences are disclosed in a patent application.” This ensures clear and consistent referencing of sequences throughout the application.
To learn more:
MPEP 2410.01 – Conditions Of Deposit (1)
The case of Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990) is mentioned in MPEP 2410.01 in the context of biological material deposits. This case is significant because it reinforces the requirement that all restrictions on access to deposited biological material must be removed upon patent grant, with only the specific exception allowed under 37 CFR 1.808(b).
The MPEP cites this case to emphasize that compliance with the Budapest Treaty alone is not sufficient to meet all U.S. requirements for biological deposits. Specifically, the MPEP states: Consequently, the mere indication that a deposit has been made and accepted under conditions prescribed by the Budapest Treaty would satisfy all conditions of these regulations except the requirement that all restrictions on access be removed on grant of the patent. Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990).
To learn more:
MPEP 2421.02 – Summary Of The Requirements Of The Sequence Rules (1)
Sequence identifiers (SEQ ID NOs) are crucial in patent applications containing nucleotide and/or amino acid sequences. According to MPEP 2421.02:
- Each disclosed nucleotide and/or amino acid sequence must be assigned a unique SEQ ID NO.
- SEQ ID NOs must be used to identify sequences in the specification, claims, and drawings.
- The SEQ ID NO should be placed adjacent to the sequence or used in a table correlating sequence names with their corresponding SEQ ID NOs.
The MPEP states: “The rules require that the sequence identifiers must be used in all instances where the sequences are disclosed in a patent application.” This ensures clear and consistent referencing of sequences throughout the application.
To learn more:
MPEP 2422.01 – Nucleotide And/Or Amino Acids Disclosures Requiring A "Sequence Listing" (1)
A Sequence Identifier (SEQ ID NO) is a unique number assigned to each disclosed nucleic acid and/or amino acid sequence in a patent application. According to MPEP 2422.01:
“37 CFR 1.821(d) and 37 CFR 1.823(a)(5) require that each disclosed nucleic acid and/or amino acid sequence in the application appear separately in the “Sequence Listing”, with each sequence further being assigned a sequence identifier, referred to as “SEQ ID NO:” or the like.“
Key points about Sequence Identifiers:
- They must begin with 1 and increase sequentially by integers.
- Each sequence must have a different number for identification.
- Sequences should be presented in numerical order in the “Sequence Listing” where practical.
- When discussing a sequence in the description or claims, a reference to its SEQ ID NO is required at all occurrences.
- SEQ ID NOs can be used to discuss or claim parts of a sequence (e.g., “residues 14 to 243 of SEQ ID NO:23”).
The use of SEQ ID NOs provides a shorthand way for applicants to discuss and claim their inventions without restricting how an invention can be claimed.
To learn more:
MPEP 2500 – Maintenance Fees (1)
Yes, a patent can be reinstated after expiration due to non-payment of maintenance fees under certain conditions. The MPEP 2590 outlines the process for patent reinstatement:
“The patent may be reinstated if the delay in payment of the maintenance fee was unintentional.”
Key points about patent reinstatement:
- A petition for reinstatement must be filed within 24 months from the expiration date.
- The petition must include a statement that the delay was unintentional.
- All required maintenance fees and any applicable surcharges must be paid.
- The Director of the USPTO must determine that the delay was indeed unintentional.
It’s important to note that the reinstatement process is not automatic and requires a formal petition and fee payment.
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MPEP 2575 – Notices (1)
Yes, a patent can be reinstated after expiration due to non-payment of maintenance fees under certain conditions. The MPEP 2590 outlines the process for patent reinstatement:
“The patent may be reinstated if the delay in payment of the maintenance fee was unintentional.”
Key points about patent reinstatement:
- A petition for reinstatement must be filed within 24 months from the expiration date.
- The petition must include a statement that the delay was unintentional.
- All required maintenance fees and any applicable surcharges must be paid.
- The Director of the USPTO must determine that the delay was indeed unintentional.
It’s important to note that the reinstatement process is not automatic and requires a formal petition and fee payment.
To learn more:
MPEP 2800 – Supplemental Examination (1)
How do I update my address for patent correspondence with the USPTO?
To update your address for patent correspondence with the USPTO:
- Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012.
- Use Form PTO/SB/122 for applications filed before September 16, 2012.
- Submit the form to the USPTO’s Mail Stop Post Issue division.
The MPEP states: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration (OPLA).” (MPEP 2805)
Ensure you follow the proper procedures to maintain accurate communication channels with the USPTO regarding your patent.
To learn more:
MPEP 2805 – Correspondence With Patent Owner; Patent Owner Address (1)
How do I update my address for patent correspondence with the USPTO?
To update your address for patent correspondence with the USPTO:
- Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012.
- Use Form PTO/SB/122 for applications filed before September 16, 2012.
- Submit the form to the USPTO’s Mail Stop Post Issue division.
The MPEP states: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration (OPLA).” (MPEP 2805)
Ensure you follow the proper procedures to maintain accurate communication channels with the USPTO regarding your patent.
To learn more:
MPEP 2900 – International Design Applications (1)
The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
To learn more:
MPEP 2904 – Who May File An International Design Application (1)
The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
To learn more:
MPEP 300 – Ownership and Assignment (15)
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:
- For name changes:
Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
- For mergers:
Documents of merger are also proper links in the chain of title.
Recording these changes ensures:
- The USPTO has up-to-date information on patent ownership
- Third parties can accurately identify the current patent owner
- The chain of title remains clear and unbroken, which can be important for future transactions or litigation
- Compliance with legal requirements for maintaining patent rights
Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:
“Joint inventors are treated as joint owners of the invention unless there is an assignment.”
Key aspects of joint ownership include:
- Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
- Profits do not need to be shared unless there’s a specific agreement.
- All joint owners must agree to sell or assign the entire patent to a third party.
- In infringement suits, all joint owners must be joined as plaintiffs.
It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.
For more information on joint inventors, visit: joint inventors.
For more information on joint ownership, visit: joint ownership.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
To correct assignee information on an issued patent, you must follow these steps:
- Submit a request for a certificate of correction under 37 CFR 1.323.
- Ensure that a request under 37 CFR 3.81(b) has been granted.
- Confirm that the assignment was submitted for recordation before the patent was issued.
According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”
The request should be directed to the Office of Petitions and include:
- The processing fee required by 37 CFR 1.17(i)
- A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
- A statement that the assignment was submitted for recordation before the patent was issued
- A request for a certificate of correction under 37 CFR 1.323 with the associated fee
For more information on assignee information, visit: assignee information.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on Patent correction, visit: Patent correction.
For more information on USPTO procedures, visit: USPTO procedures.
What happens if a patent assignment is not recorded with the USPTO?
Failing to record a patent assignment with the USPTO can have significant consequences:
- Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
- Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
- Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’
While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.
For more information on USPTO, visit: USPTO.
The USPTO has specific provisions for handling partial assignees in patent issuance:
- If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
- If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.
This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.
To correct an error in a recorded assignment document at the USPTO, you have two main options:
- Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
- Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.
As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”
For more information on assignment correction, visit: assignment correction.
For more information on cover sheet, visit: cover sheet.
For more information on USPTO, visit: USPTO.
What happens if an assignment document is not recorded at the USPTO?
If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:
‘An assignment, grant, or conveyance of a patent or application shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Office within three months from its date or prior to the date of such subsequent purchase or mortgage.’
In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.
For more information on assignment recording, visit: assignment recording.
For more information on legal implications, visit: legal implications.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
To record an assignment of a patent or patent application, the following requirements must be met:
- The assignment must be in writing.
- It must be signed by the assignor (the person or entity transferring ownership).
- The document must identify the patent or application by number.
- The assignment must be submitted to the USPTO along with the required fee.
According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.
For more information on patent assignment, visit: patent assignment.
For more information on recordation, visit: recordation.
For more information on USPTO, visit: USPTO.
How are historical patent assignment records maintained?
The USPTO maintains historical patent assignment records separately from more recent records. MPEP 301.01 explains:
‘The historical database of assignments is maintained separate and apart from the database of assignments affecting title recorded since 1980.’
This means that:
- Records prior to August 1980 are kept in a separate historical database
- These older records may not be available through the online Patent Assignment Search
- Accessing historical records may require different procedures or direct contact with the USPTO
For researchers or legal professionals needing access to pre-1980 assignment records, it’s advisable to contact the USPTO’s Patent and Trademark Resource Centers or the Assignment Recordation Branch for assistance.
What information is available in the USPTO’s assignment database?
The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:
‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’
The database typically includes:
- Patent or application numbers
- Names of assignors and assignees
- Dates of assignment execution and recording
- Brief descriptions of the interests conveyed
- Reel and frame numbers for locating documents
This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.
Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:
- Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
- Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”
These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.
For more information on multiple assignees, visit: multiple assignees.
For more information on partial assignees, visit: partial assignees.
For more information on patent issuance, visit: patent issuance.
An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:
- Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
- 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.
As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.
For more information on USPTO procedures, visit: USPTO procedures.
What is the difference between recording a license and an assignment at the USPTO?
The main difference between recording a license and an assignment at the USPTO lies in the transfer of ownership rights:
- Assignment: Transfers ownership of the patent or application to another party.
- License: Grants permission to use the patent or application without transferring ownership.
According to MPEP 313: Other documents relating to interests in patents or applications will be recorded as provided in 37 CFR 3.11(a).
This includes licenses, which are recorded to provide notice of the agreement but do not change the ownership records at the USPTO.
Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch
. To access these records:
- Visit the USPTO Assignment Search website
- Enter the relevant patent or application number, assignee name, or other search criteria
- Review the search results for assignment information
This online database provides public access to assignment records, allowing for easy verification of patent ownership.
MPEP 301-Ownership/Assignability of Patents and Applications (5)
Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:
“Joint inventors are treated as joint owners of the invention unless there is an assignment.”
Key aspects of joint ownership include:
- Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
- Profits do not need to be shared unless there’s a specific agreement.
- All joint owners must agree to sell or assign the entire patent to a third party.
- In infringement suits, all joint owners must be joined as plaintiffs.
It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.
For more information on joint inventors, visit: joint inventors.
For more information on joint ownership, visit: joint ownership.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
To record an assignment of a patent or patent application, the following requirements must be met:
- The assignment must be in writing.
- It must be signed by the assignor (the person or entity transferring ownership).
- The document must identify the patent or application by number.
- The assignment must be submitted to the USPTO along with the required fee.
According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.
For more information on patent assignment, visit: patent assignment.
For more information on recordation, visit: recordation.
For more information on USPTO, visit: USPTO.
How are historical patent assignment records maintained?
The USPTO maintains historical patent assignment records separately from more recent records. MPEP 301.01 explains:
‘The historical database of assignments is maintained separate and apart from the database of assignments affecting title recorded since 1980.’
This means that:
- Records prior to August 1980 are kept in a separate historical database
- These older records may not be available through the online Patent Assignment Search
- Accessing historical records may require different procedures or direct contact with the USPTO
For researchers or legal professionals needing access to pre-1980 assignment records, it’s advisable to contact the USPTO’s Patent and Trademark Resource Centers or the Assignment Recordation Branch for assistance.
What information is available in the USPTO’s assignment database?
The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:
‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’
The database typically includes:
- Patent or application numbers
- Names of assignors and assignees
- Dates of assignment execution and recording
- Brief descriptions of the interests conveyed
- Reel and frame numbers for locating documents
This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.
Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch
. To access these records:
- Visit the USPTO Assignment Search website
- Enter the relevant patent or application number, assignee name, or other search criteria
- Review the search results for assignment information
This online database provides public access to assignment records, allowing for easy verification of patent ownership.
MPEP 302 – Recording of Assignment Documents (2)
What happens if a patent assignment is not recorded with the USPTO?
Failing to record a patent assignment with the USPTO can have significant consequences:
- Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
- Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
- Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’
While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.
For more information on USPTO, visit: USPTO.
What happens if an assignment document is not recorded at the USPTO?
If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:
‘An assignment, grant, or conveyance of a patent or application shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Office within three months from its date or prior to the date of such subsequent purchase or mortgage.’
In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.
For more information on assignment recording, visit: assignment recording.
For more information on legal implications, visit: legal implications.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
MPEP 307 – Issue to Non – Applicant Assignee (3)
To correct assignee information on an issued patent, you must follow these steps:
- Submit a request for a certificate of correction under 37 CFR 1.323.
- Ensure that a request under 37 CFR 3.81(b) has been granted.
- Confirm that the assignment was submitted for recordation before the patent was issued.
According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”
The request should be directed to the Office of Petitions and include:
- The processing fee required by 37 CFR 1.17(i)
- A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
- A statement that the assignment was submitted for recordation before the patent was issued
- A request for a certificate of correction under 37 CFR 1.323 with the associated fee
For more information on assignee information, visit: assignee information.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on Patent correction, visit: Patent correction.
For more information on USPTO procedures, visit: USPTO procedures.
The USPTO has specific provisions for handling partial assignees in patent issuance:
- If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
- If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.
This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.
Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:
- Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
- Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”
These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.
For more information on multiple assignees, visit: multiple assignees.
For more information on partial assignees, visit: partial assignees.
For more information on patent issuance, visit: patent issuance.
MPEP 310 – Government License Rights to Contractor – Owned Inventions Made Under Federally Sponsored Research and Development (1)
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
MPEP 314 – Certificates of Change of Name or of Merger (1)
Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:
- For name changes:
Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
- For mergers:
Documents of merger are also proper links in the chain of title.
Recording these changes ensures:
- The USPTO has up-to-date information on patent ownership
- Third parties can accurately identify the current patent owner
- The chain of title remains clear and unbroken, which can be important for future transactions or litigation
- Compliance with legal requirements for maintaining patent rights
MPEP 323 – Procedures for Correcting Errors in Recorded Assignment Document (1)
To correct an error in a recorded assignment document at the USPTO, you have two main options:
- Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
- Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.
As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”
For more information on assignment correction, visit: assignment correction.
For more information on cover sheet, visit: cover sheet.
For more information on USPTO, visit: USPTO.
MPEP 400 – Representative of Applicant or Owner (7)
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.
The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’
For more information on patent application requirements, visit: patent application requirements.
Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:
- Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
- Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
- Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.
The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.
It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.
To learn more:
What is the difference between a correspondence address and a fee address in USPTO filings?
In USPTO filings, the correspondence address and fee address serve different purposes:
- Correspondence Address: Where the USPTO sends all official communications regarding a patent application or patent.
- Fee Address: Where the USPTO sends maintenance fee reminders for granted patents.
The MPEP clarifies:
The correspondence address is the address associated with the Customer Number to which correspondence is directed. The fee address is the address associated with the Customer Number to which maintenance fee reminders are directed.
(MPEP 403)
While these addresses can be the same, they don’t have to be. Applicants or patent owners might choose different addresses, for example, if a law firm handles prosecution but the company itself manages maintenance fees. Using a customer number allows for easy management of both addresses.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on Customer Number, visit: Customer Number.
For more information on Fee Address, visit: Fee Address.
For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:
- The inventor(s)
- An assignee to whom the inventor has assigned the invention
- An obligated assignee to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
Canadian patent agents must meet specific requirements to practice before the USPTO under limited recognition:
- They must be registered and in good standing as a patent agent under Canadian law.
- They must apply for limited recognition to the USPTO Director.
- They can only represent Canadian citizens or residents before the USPTO.
- Their representation is limited to the presentation and prosecution of patent applications of Canadian applicants.
As stated in MPEP 402.01: Canadian patent agents are not required to pass the regular patent bar examination to represent Canadian applicants. They need not seek formal recognition to practice before the Office.
To learn more:
A ‘person to whom the inventor has assigned or is under an obligation to assign the invention’ refers to an individual or entity that has received rights to the invention through a legal agreement or contract. This concept is important in patent applications filed on or after September 16, 2012, as explained in MPEP 409.05:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
This provision allows assignees or those with a contractual right to the invention to file patent applications, even if they are not the original inventors.
To learn more:
Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
To learn more:
MPEP 403 – Correspondence — With Whom Held; Customer Number Practice (1)
What is the difference between a correspondence address and a fee address in USPTO filings?
In USPTO filings, the correspondence address and fee address serve different purposes:
- Correspondence Address: Where the USPTO sends all official communications regarding a patent application or patent.
- Fee Address: Where the USPTO sends maintenance fee reminders for granted patents.
The MPEP clarifies:
The correspondence address is the address associated with the Customer Number to which correspondence is directed. The fee address is the address associated with the Customer Number to which maintenance fee reminders are directed.
(MPEP 403)
While these addresses can be the same, they don’t have to be. Applicants or patent owners might choose different addresses, for example, if a law firm handles prosecution but the company itself manages maintenance fees. Using a customer number allows for easy management of both addresses.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on Customer Number, visit: Customer Number.
For more information on Fee Address, visit: Fee Address.
MPEP 410 – Representations to the U.S. Patent and Trademark Office (1)
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.
The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’
For more information on patent application requirements, visit: patent application requirements.
MPEP 500 – Receipt and Handling of Mail and Papers (5)
The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:
A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.
This means that:
- If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
- The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
- Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.
However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.
To learn more:
If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:
- File a petition to the USPTO, accompanied by the required petition fee
- Provide arguments and evidence supporting why the application should be granted the desired filing date
- If alleging no defect exists, include a request for a refund of the petition fee
The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.
Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.
It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.
For more information on patent application review, visit: patent application review.
Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’
The consequences of such actions can be severe, potentially including:
- Invalidation of the patent
- Criminal charges for fraud
- Disciplinary action against registered patent practitioners
It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.
To learn more:
To qualify for micro entity status, an applicant must meet the following requirements:
- Qualify as a small entity
- Not be named as an inventor on more than 4 previously filed patent applications
- Not have a gross income exceeding 3 times the median household income in the previous calendar year
- Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit
Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.
The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:
- Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
- Electronic filing systems may be available 24/7, but the official filing date will be the next business day
MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”
MPEP 506 – Completeness of Original Application (1)
If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:
- File a petition to the USPTO, accompanied by the required petition fee
- Provide arguments and evidence supporting why the application should be granted the desired filing date
- If alleging no defect exists, include a request for a refund of the petition fee
The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.
Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.
It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.
For more information on patent application review, visit: patent application review.
MPEP 509 – Payment of Fees (1)
To qualify for micro entity status, an applicant must meet the following requirements:
- Qualify as a small entity
- Not be named as an inventor on more than 4 previously filed patent applications
- Not have a gross income exceeding 3 times the median household income in the previous calendar year
- Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit
Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.
MPEP 510 – U.S. Patent and Trademark Office Business Hours (1)
The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:
- Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
- Electronic filing systems may be available 24/7, but the official filing date will be the next business day
MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”
Or Violation Of Duty Of Disclosure Affects All Claims (1)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
To learn more:
Patent Financing (8)
You have full control of your patents while BlueIron finances them. However, just like having a landlord for your office space, BlueIron “owns” the patents.
There is a difference between control and “ownership.” BlueIron “owns” the patents, but you control them.
nnnnHaving control of the patents means that you get all the benefits of owning the patents without having to pay for them up front. You get to enforce the patents, cross-license the patents, and can even sell your rights to the patents.
nnnnBlueIron provides at least $500K of patent enforcement insurance for your patents, so that you always have dry powder to use those patents as you see fit.
nnnnEven though BlueIron provides the patents and insurance to use them, you are in complete control of how – and if – you choose to use the patents.
BlueIron is taking several risks when financing a patent.
nnnnBlueIron is taking the risk that the patent will even issue.
nnnnBlueIron is making an investment in researching the invention, writing the patent, and getting the patent through the patent office. If BlueIron fails to get a patent, you can walk away from the deal at any time, and BlueIron loses its investment.
nnnnBlueIron is taking the risk that the patent will have value.
nnnnBlueIron is also assuming the risk that the patent will be valuable. If you walk away from the deal, BlueIron is left holding the patent and will need to liquidate the patent. We will probably try to sell the asset to someone in the field, auction off the asset, or try to find someone who might license the asset.
nnnnWhy is it important that BlueIron assume these risks?
nnnnAs a company who has intellectual property, you need to rely on those assets when you are making business decisions. A conventional patent attorney cannot really tell you the truth about your patents. They have an inherent conflict of interest: don’t ask the barber if you need a haircut.
nnnnBy taking ownership of the patents and leasing them back, BlueIron has the exact same interest as you do: solid, investment-grade patents.
Yes. The buyout cost for a patent is set up front and will not change.
nnnnThe buyout is NOT a percentage of patent value, revenue, or any other measure. We do not take warrants, “success fees,” or any type of carry.
nnnnOur job is to build Investment Grade Patents for you, not become a tax on your success.
nnnnTypically, the total price for a patent will be defined at the beginning of an engagement. If you need to buyout the patent after it is filed but before the examination begins, the buyout price is 1/3 of the total price. If you choose to buyout the patent after examination begins but before allowance, the buyout price is 2/3 of the total price.
nThe legal structure is a convertible note, lease-back structure. The IP assets are held in a Special Purpose Vehicle (SPV), which is how virtually all of the Fortune 500 companies hold their IP.
nnnnThe SPV grants an exclusive license to the startup with a buyout option. The startup can exercise the buyout option at any time.
nnnnA buyout option is always available and always at a fixed price. There is no way BlueIron can “pad the bills” or raise the buyout price because everything is a fixed price.
nnnnSometimes, BlueIron has held patents for 3, 6, or 12 months and the company exercises their buyout option. In other cases, the startup has a high cost of capital and it makes sense for them to pay over time.
nFinancially, a startup’s cost of capital is extremely high – nespecially at the beginning – so every dollar needs to be spent wisely. n Leasing or renting assets is much more capital efficient.
nnnnMost startup companies lease office space and even lease furniture nthrough a coworking space. They lease computer services through Amazon nWeb Services and Microsoft Azure. Virtually all of the tools they use nare SaaS or other “leasing” type models.
nnnnThe reason why leasing or renting is attractive is two fold:
nnnn- Leasing an asset means you do not have to pay for it up front.
- Leasing an asset means someone else takes care of building and maintaining the asset.
When you consider a startup company’s cost of capital, BlueIron’s financing is actually cheaper on a Net Present Value of money basis.
nnnnThe big benefit of “leasing your patents” is that BlueIron is nperfectly aligned with your business. We need to create good, solid nassets and will only do so when there is a business reason. You will nnever get the feeling that you are asking the barber if you need a nhaircut.
nYes! Our due diligence reports are highly respected by investors.
nnnnOur patent financing due diligence process not only evaluates patentability, but also enforceability, the economic advantage of the invention, its value to the startup’s market, as well as its value to competitors. Solid business value is REQUIRED before BlueIron can finance the invention, and BlueIron’s due diligence reports puts investor’s minds at ease about their investment.
nnnnBlueIron’s financing ensures that we have “skin in the game.” We succeed only if the patents are valuable and when your company is successful. Investors understand an “alignment of interests.”
nnnnOur investment is non-dilutive.
nnnnBlueIron’s financing is non-dilutive. Founders, angels, or other equity-based investors are not diluted because BlueIron does not take equity.
nnnnThe inventor’s money goes much further, meaning they get a higher overall return.
nBlueIron can get a US patent as quickly as six months or less in some cases. However, many times it takes 3 to 5 years.
nnnnHow do we do it?
nnnnBlueIron’s founder, Russ Krajec, had the opportunity to join a startup company where we needed patent assets as fast as possible. In that startup, he was able to experiment with 100 patent applications to find the best way.
nnnnThe answer: the Patent Prosecution Highway in the US. Using the PCT/PPH, Russ was able to get patents issued in the US within 4-8 months very consistently.
nnnnOne key to expediting a patent is proper preparation. A patent search is critical to understand the landscape and to make sure that the claims are appropriate: not too broad but directed at an economically valuable invention.
nnnnAnother key is the right strategy. The USPTO has a program called “Track One” which has several pitfalls, but it costs about the same as a PCT application. It is the PCT application which gets you on the Patent Prosecution Highway, which is much better than Track One. Feel free to give us a call and we can talk about the differences.
Yes!
nnnnJust like leasing a car, you have full CONTROL of the IP assets without having to pay the full price up front.
nnnnBecause you have an exclusive license, you – and only you – decide nhow to use the patent assets. You can enforce, license, sublicense, ncross license, or sell your business assets. BlueIron has no veto power nand no say in how you run your business.
nnnnBlueIron provides Patent Enforcement Insurance with every patent nfinance agreement. This means you have pre-paid legal fees ready and nwaiting to assert the patents against infringers. We do not want you ton fail to enforce the assets just because of lack of money.
nPatent Insurance (5)
Patent insurance comes in two basic forms: patent enforcement and patent defense. Enforcement is where someone infringes your patent and you need to enforce your rights. Defense is when someone else accuses you of infringing their patents. This can be a competitor or a patent troll.
nnnnEnforcement insurance typically costs about 1-1.5% per year of the total amount of insurance. For example, $1,000,000 of patent enforcement insurance will cost about $10,000/year.
nnnnDefense insurance typically costs about 1.5% per year. $1,000,000 of patent defense insurance will cost about $15,000/year.
nnnnThese amounts are guidelines, and your actual premiums will only be determined after due diligence and underwriting.
BlueIron is a licensed insurance agent, and acts as an insurance wholesaler for many brokers and agents. Please have your insurance agent contact us.
nnnnBlueIron does not provide any other insurance other than Intellectual Property related insurance.
nWith our patent enforcement insurance policies YOU control all aspects of how to enforce your patent.
nnnnSometimes you may wish to strongly enforce their patent to prevent a specific competitor from operating in your space. Other times, you may want to obtain a license agreement from a competitor. Still other times, you may want to cross license your patent for a technology a competitor may have.
nnnnIn every case, YOU control how the enforcement proceeds.
Absolutely. We know you have good relationships with your attorneys, and we are happy that you want to use them.
nnnnOur only requirement is that the attorneys have prior first-chair experience in intellectual property litigation in federal court. If your attorney does not have this experience, we are happy to recommend attorneys who do.
nnnnWe do offer a discount if you use attorneys who we have previously vetted, but you are not required to use them.
We offer a wide range of patent enforcement and patent defense insurance, however, our main insurance provider is a program manager for a Lloyd’s of London syndicate that focuses on intellectual property insurance.
Patent Law (173)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:
- For name changes:
Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
- For mergers:
Documents of merger are also proper links in the chain of title.
Recording these changes ensures:
- The USPTO has up-to-date information on patent ownership
- Third parties can accurately identify the current patent owner
- The chain of title remains clear and unbroken, which can be important for future transactions or litigation
- Compliance with legal requirements for maintaining patent rights
Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:
“Joint inventors are treated as joint owners of the invention unless there is an assignment.”
Key aspects of joint ownership include:
- Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
- Profits do not need to be shared unless there’s a specific agreement.
- All joint owners must agree to sell or assign the entire patent to a third party.
- In infringement suits, all joint owners must be joined as plaintiffs.
It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.
For more information on joint inventors, visit: joint inventors.
For more information on joint ownership, visit: joint ownership.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:
- The filing date of the CPA request
- The parent application number
The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established.
Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.
For more information on USPTO filing procedures, visit: USPTO filing procedures.
Claiming priority to a PCT international application can be done in two ways:
- In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
- In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)
In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).
A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.
According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.
This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on Patent Application Process, visit: Patent Application Process.
To correct assignee information on an issued patent, you must follow these steps:
- Submit a request for a certificate of correction under 37 CFR 1.323.
- Ensure that a request under 37 CFR 3.81(b) has been granted.
- Confirm that the assignment was submitted for recordation before the patent was issued.
According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”
The request should be directed to the Office of Petitions and include:
- The processing fee required by 37 CFR 1.17(i)
- A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
- A statement that the assignment was submitted for recordation before the patent was issued
- A request for a certificate of correction under 37 CFR 1.323 with the associated fee
For more information on assignee information, visit: assignee information.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on Patent correction, visit: Patent correction.
For more information on USPTO procedures, visit: USPTO procedures.
What happens if a patent assignment is not recorded with the USPTO?
Failing to record a patent assignment with the USPTO can have significant consequences:
- Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
- Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
- Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’
While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.
For more information on USPTO, visit: USPTO.
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
To learn more:
The USPTO has specific provisions for handling partial assignees in patent issuance:
- If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
- If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.
This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.
To correct an error in a recorded assignment document at the USPTO, you have two main options:
- Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
- Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.
As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”
For more information on assignment correction, visit: assignment correction.
For more information on cover sheet, visit: cover sheet.
For more information on USPTO, visit: USPTO.
Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
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If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on late submission, visit: late submission.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:
“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”
By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.
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An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.
According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”
The petition to restore the right of priority must include:
- The priority claim identifying the prior foreign application
- The petition fee
- A statement that the delay in filing was unintentional
The USPTO may require additional information to establish that the delay was unintentional.
For more information on foreign priority, visit: foreign priority.
For more information on priority restoration, visit: priority restoration.
For more information on unintentional delay, visit: unintentional delay.
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
- An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
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MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
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35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:
- National applications based on international applications
- International applications based on foreign applications
The MPEP states:
“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”
“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”
These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.
Yes, an abandoned application can still be used as a priority document for subsequent applications, provided that the priority claim is made within the specified time limits. The abandoned status of the earlier application does not affect its ability to serve as a basis for priority. For more information on priority claims, refer to MPEP 201 and MPEP 211.
The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
(MPEP 2112)
However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”
The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.
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Can a divisional application be filed without a restriction requirement?
While divisional applications are typically filed in response to a restriction requirement, they can be filed voluntarily without one. The MPEP 201.06 states:
“A divisional application is often filed as a result of a restriction requirement made by the examiner.”
However, the use of “often” implies that this is not always the case. Applicants may choose to file a divisional application voluntarily if they:
- Recognize distinct inventions in their application
- Want to pursue different claim scopes separately
- Need to address potential unity of invention issues proactively
It’s important to note that voluntarily filing a divisional application without a restriction requirement may affect the application of the safe harbor provision under 35 U.S.C. 121, which protects against double patenting rejections in certain cases.
For more information on Divisional application, visit: Divisional application.
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
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A Sequence Identifier (SEQ ID NO) is a unique number assigned to each disclosed nucleic acid and/or amino acid sequence in a patent application. According to MPEP 2422.01:
“37 CFR 1.821(d) and 37 CFR 1.823(a)(5) require that each disclosed nucleic acid and/or amino acid sequence in the application appear separately in the “Sequence Listing”, with each sequence further being assigned a sequence identifier, referred to as “SEQ ID NO:” or the like.“
Key points about Sequence Identifiers:
- They must begin with 1 and increase sequentially by integers.
- Each sequence must have a different number for identification.
- Sequences should be presented in numerical order in the “Sequence Listing” where practical.
- When discussing a sequence in the description or claims, a reference to its SEQ ID NO is required at all occurrences.
- SEQ ID NOs can be used to discuss or claim parts of a sequence (e.g., “residues 14 to 243 of SEQ ID NO:23”).
The use of SEQ ID NOs provides a shorthand way for applicants to discuss and claim their inventions without restricting how an invention can be claimed.
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If there’s an error in the preprinted prior application data, the following steps should be taken:
- If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
- After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
- If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
- In some cases, a petition for an unintentionally delayed benefit claim may also be required.
The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)
What is the significance of drawings in proving conception for a patent?
Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:
“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“
In this context, drawings are significant because:
- They provide a visual representation of the inventor’s mental picture of the invention.
- Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
- Drawings can help prove that the invention was “ready for patenting” at the time of conception.
- They can serve as corroborating evidence to support the inventor’s testimony about conception.
The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.
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Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):
“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”
The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:
- A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
- A specific improvement to the way computers operate (Enfish)
- A particular method of incorporating virus screening into the Internet (Symantec Corp)
However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”
The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.
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The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:
“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”
This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.
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The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:
“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”
This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.
For more information on non-English language, visit: non-English language.
For more information on provisional application, visit: provisional application.
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
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For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).
According to MPEP ¶ 2.34:
“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”
This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on CPA, visit: CPA.
For more information on specific reference, visit: specific reference.
The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:
“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”
This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.
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Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:
- Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
- Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.
The MPEP explicitly states in MPEP ¶ 2.01:
“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”
This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).
For more information on Divisional application, visit: Divisional application.
For more information on patent law, visit: patent law.
For more information on provisional application, visit: provisional application.
For more information on USPTO, visit: USPTO.
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:
1. Continuations: A design application can be a continuation of a prior design application.
2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.
3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.
The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”
It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.
MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
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The case of Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990) is mentioned in MPEP 2410.01 in the context of biological material deposits. This case is significant because it reinforces the requirement that all restrictions on access to deposited biological material must be removed upon patent grant, with only the specific exception allowed under 37 CFR 1.808(b).
The MPEP cites this case to emphasize that compliance with the Budapest Treaty alone is not sufficient to meet all U.S. requirements for biological deposits. Specifically, the MPEP states: Consequently, the mere indication that a deposit has been made and accepted under conditions prescribed by the Budapest Treaty would satisfy all conditions of these regulations except the requirement that all restrictions on access be removed on grant of the patent. Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990).
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AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
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Can a continuation-in-part application claim priority to a provisional application?
Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.
Key points to understand:
- Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
- New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
- One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
- Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.
Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.
For more information on new matter, visit: new matter.
For more information on provisional application, visit: provisional application.
The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:
- It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
- In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
- In Step 2B, it can contribute to the “significantly more” analysis.
- A particular machine can potentially transform an abstract idea into patent-eligible subject matter.
MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”
The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
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The front page of a patent includes the following information regarding foreign priority claims:
- The country of the foreign application
- The filing date of the foreign application
- The number of the foreign application
This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
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Sequence identifiers (SEQ ID NOs) are crucial in patent applications containing nucleotide and/or amino acid sequences. According to MPEP 2421.02:
- Each disclosed nucleotide and/or amino acid sequence must be assigned a unique SEQ ID NO.
- SEQ ID NOs must be used to identify sequences in the specification, claims, and drawings.
- The SEQ ID NO should be placed adjacent to the sequence or used in a table correlating sequence names with their corresponding SEQ ID NOs.
The MPEP states: “The rules require that the sequence identifiers must be used in all instances where the sequences are disclosed in a patent application.” This ensures clear and consistent referencing of sequences throughout the application.
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A ‘bypass’ continuation application is a specific type of continuation application that is filed under 37 CFR 1.53(b) to ‘bypass’ the national stage of an international application. As explained in MPEP 201.06(c):
“A continuation application filed under 37 CFR 1.53(b) may be filed as a continuation of an international application designating the United States without entering the national stage under 35 U.S.C. 371. This is often referred to as a ‘bypass’ continuation application.”
This type of application allows applicants to pursue patent protection in the U.S. based on their international application without going through the formal national stage entry process. It can be advantageous in certain situations, such as when an applicant wants to modify claims or add new matter before U.S. examination.
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
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The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
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Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:
“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”
Antecedent basis serves several important functions:
- Ensures clarity and definiteness of claim terms
- Provides a link between the claims and the specification
- Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
- Facilitates proper interpretation of claim scope
To maintain proper antecedent basis:
- Introduce elements in the claims with “a” or “an”
- Refer back to previously introduced elements with “the” or “said”
- Ensure that all claim terms have support in the specification
By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.
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What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
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English translations of non-English language foreign applications are not always required. However, 37 CFR 1.55(g)(3) specifies three situations where an English translation may be necessary:
“An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference or derivation proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.”
If a translation is required, it must be filed with a statement certifying that the translation is accurate. This ensures that the USPTO can properly evaluate the priority claim when necessary for examination or proceedings.
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Yes, an applicant can appeal a secrecy order issued on their patent application. According to MPEP 120, “An appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied.” This means that the applicant must first:
- Petition for rescission of the secrecy order
- If the petition is denied, then appeal to the Secretary of Commerce
The appeal process is governed by the provisions of 35 U.S.C. 181 and provides a mechanism for applicants to challenge the imposition of a secrecy order.
According to MPEP 608.02(d), conventional features in patent drawings should be illustrated as follows:
- Use graphical drawing symbols
- Use labeled representations (e.g., a labeled rectangular box)
The MPEP states: However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).
This approach simplifies the drawings while still providing necessary information about conventional elements. It allows the focus to remain on the novel aspects of the invention while acknowledging the presence of standard components.
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Yes, there is one exception. A suspended or excluded patent attorney or agent can inspect an application if they are the inventor or applicant of that particular application. The MPEP clarifies:
USPTO employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it is one in which said attorney or agent is an inventor or the applicant.
So while suspended or excluded practitioners generally cannot inspect applications, they can still access ones in which they are directly involved as the inventor or applicant.
Incorporating by reference in patent applications can have significant impacts:
- It allows applicants to include the content of another document without reproducing it in full.
- The incorporated material becomes part of the application as if it were explicitly included.
- It can provide support for claims and help meet disclosure requirements.
MPEP 211.05 mentions:
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.
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The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:
A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.
This means that:
- If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
- The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
- Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.
However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.
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If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:
- File a petition to the USPTO, accompanied by the required petition fee
- Provide arguments and evidence supporting why the application should be granted the desired filing date
- If alleging no defect exists, include a request for a refund of the petition fee
The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.
Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.
It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.
For more information on patent application review, visit: patent application review.
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.
The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’
For more information on patent application requirements, visit: patent application requirements.
Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:
- Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
- Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
- Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.
The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.
It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.
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Excess claims fees are additional fees charged for patent applications that contain more than a certain number of claims. According to the MPEP:
- 37 CFR 1.16(h) sets the fee for each independent claim in excess of three.
- 37 CFR 1.16(i) sets the fee for each claim (independent or dependent) in excess of twenty.
The MPEP states: The excess claims fees specified in 37 CFR 1.16(h) and (i) apply to any excess claims fee paid, regardless of the filing date of the application and regardless of the date on which the claim necessitating the excess claims fee payment was added to the application.
These fees also apply to reissue applications, but the claims in the original patent are not counted when determining excess claims fees for a reissue application. For applications filed without claims, excess claims fees are due when the excess claims are presented in the application.
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While the American Inventors Protection Act (AIPA) introduced the 18-month publication rule, there are several exceptions to this requirement. According to MPEP 901.03, an application shall not be published if it falls under any of the following categories:
- (A) no longer pending;
- (B) subject to a secrecy order under 35 U.S.C. 181;
- (C) a provisional application filed under 35 U.S.C. 111(b);
- (D) an application for a design patent filed under 35 U.S.C. 171;
- (E) an application for an International design application filed under 35 U.S.C. 382; or
- (F) a reissue application filed under 35 U.S.C. 251.
Additionally, an application will not be published if the applicant submits a request for nonpublication at the time of filing.
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When claiming benefit to multiple prior applications, applicants must carefully establish a chain of copendency. The MPEP 211.01(b) provides guidance:
“The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.”
Key points to remember:
- References must be made in each intermediate application in the chain.
- A specific reference is required for each prior-filed application and cannot be incorporated by reference from a prior application.
- There is no limit to the number of prior applications through which a chain of copendency may be traced.
It’s crucial to properly reference all prior applications to ensure the desired benefit claims are recognized. Failure to do so may result in the need for a petition under 37 CFR 1.78 and payment of a petition fee.
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What is the difference between a correspondence address and a fee address in USPTO filings?
In USPTO filings, the correspondence address and fee address serve different purposes:
- Correspondence Address: Where the USPTO sends all official communications regarding a patent application or patent.
- Fee Address: Where the USPTO sends maintenance fee reminders for granted patents.
The MPEP clarifies:
The correspondence address is the address associated with the Customer Number to which correspondence is directed. The fee address is the address associated with the Customer Number to which maintenance fee reminders are directed.
(MPEP 403)
While these addresses can be the same, they don’t have to be. Applicants or patent owners might choose different addresses, for example, if a law firm handles prosecution but the company itself manages maintenance fees. Using a customer number allows for easy management of both addresses.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on Customer Number, visit: Customer Number.
For more information on Fee Address, visit: Fee Address.
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
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The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:
- Obtain the caller’s full name, application number, and telephone number
- Verify the caller’s identity and authority to receive information
- Check Patent Data Portal or the application file to verify releasable information
- Return the call using a verified telephone number
Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.
What happens if an assignment document is not recorded at the USPTO?
If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:
‘An assignment, grant, or conveyance of a patent or application shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Office within three months from its date or prior to the date of such subsequent purchase or mortgage.’
In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.
For more information on assignment recording, visit: assignment recording.
For more information on legal implications, visit: legal implications.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
To record an assignment of a patent or patent application, the following requirements must be met:
- The assignment must be in writing.
- It must be signed by the assignor (the person or entity transferring ownership).
- The document must identify the patent or application by number.
- The assignment must be submitted to the USPTO along with the required fee.
According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.
For more information on patent assignment, visit: patent assignment.
For more information on recordation, visit: recordation.
For more information on USPTO, visit: USPTO.
How are historical patent assignment records maintained?
The USPTO maintains historical patent assignment records separately from more recent records. MPEP 301.01 explains:
‘The historical database of assignments is maintained separate and apart from the database of assignments affecting title recorded since 1980.’
This means that:
- Records prior to August 1980 are kept in a separate historical database
- These older records may not be available through the online Patent Assignment Search
- Accessing historical records may require different procedures or direct contact with the USPTO
For researchers or legal professionals needing access to pre-1980 assignment records, it’s advisable to contact the USPTO’s Patent and Trademark Resource Centers or the Assignment Recordation Branch for assistance.
What information is available in the USPTO’s assignment database?
The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:
‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’
The database typically includes:
- Patent or application numbers
- Names of assignors and assignees
- Dates of assignment execution and recording
- Brief descriptions of the interests conveyed
- Reel and frame numbers for locating documents
This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.
Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:
- Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
- Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”
These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.
For more information on multiple assignees, visit: multiple assignees.
For more information on partial assignees, visit: partial assignees.
For more information on patent issuance, visit: patent issuance.
Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:
“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”
This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.
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If an examiner comes across a patent application that contains national security markings but does not have a Secrecy Order imposed, MPEP 130 instructs that “the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings.” This should be done preferably with the first office action and before final disposition of the application.
37 CFR 5.1(d) states that if no Secrecy Order has issued, the USPTO will set a time period for the applicant to take one of three actions to prevent abandonment:
- Obtain a Secrecy Order
- Declassify the application
- Submit evidence of a good faith effort to obtain a Secrecy Order under 37 CFR 5.2(a)
Additionally, per 37 CFR 5.1(e), “a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.”
For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:
- The inventor(s)
- An assignee to whom the inventor has assigned the invention
- An obligated assignee to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’
The consequences of such actions can be severe, potentially including:
- Invalidation of the patent
- Criminal charges for fraud
- Disciplinary action against registered patent practitioners
It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.
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How do I cite non-English language documents in an IDS?
When citing non-English language documents in an Information Disclosure Statement (IDS), follow these guidelines:
- Provide a concise explanation of the relevance of the document.
- Include an English language translation or abstract if available.
- If a translation is not available, indicate the language of the document.
According to MPEP 609.04(a): “Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office.”
Properly citing non-English documents ensures the examiner can consider their relevance to your application.
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The MPEP provides guidance on what constitutes a valid mailing address for inventors in patent applications. According to MPEP 602.08(a):
“The inventor’s mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor’s home or business address is acceptable as the mailing address. A post office box is also acceptable.”
The mailing address should include the ZIP Code designation. It’s important to note that the address of an attorney with instructions to forward communications is not sufficient, as the purpose is to enable direct communication between the USPTO and the inventor if necessary.
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What are the consequences of not filing an IDS or submitting an incomplete IDS?
Failing to file an Information Disclosure Statement (IDS) or submitting an incomplete one can have serious consequences:
- Duty of Disclosure: Violating the duty of disclosure can lead to charges of inequitable conduct.
- Patent Invalidity: The patent may be held unenforceable if material information was intentionally withheld.
- Prosecution History Estoppel: Failure to disclose prior art may limit the scope of patent claims in future litigation.
MPEP 609 states: “The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by 37 CFR 1.97(b)-(d) and 1.98.”
It’s crucial to file a complete and timely IDS to avoid these potential pitfalls and ensure the validity and enforceability of your patent.
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Canadian patent agents must meet specific requirements to practice before the USPTO under limited recognition:
- They must be registered and in good standing as a patent agent under Canadian law.
- They must apply for limited recognition to the USPTO Director.
- They can only represent Canadian citizens or residents before the USPTO.
- Their representation is limited to the presentation and prosecution of patent applications of Canadian applicants.
As stated in MPEP 402.01: Canadian patent agents are not required to pass the regular patent bar examination to represent Canadian applicants. They need not seek formal recognition to practice before the Office.
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An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:
- Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
- 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.
As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.
For more information on USPTO procedures, visit: USPTO procedures.
What is the difference between recording a license and an assignment at the USPTO?
The main difference between recording a license and an assignment at the USPTO lies in the transfer of ownership rights:
- Assignment: Transfers ownership of the patent or application to another party.
- License: Grants permission to use the patent or application without transferring ownership.
According to MPEP 313: Other documents relating to interests in patents or applications will be recorded as provided in 37 CFR 3.11(a).
This includes licenses, which are recorded to provide notice of the agreement but do not change the ownership records at the USPTO.
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance:
- Article: “An ‘article’ includes a physical object or substance.”
- Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.”
- Change: “‘Transformation’ of an article means that the ‘article’ has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article.”
The MPEP also notes: A new or different function or use can be evidence that an article has been transformed.
It’s important to note that purely mental processes or data manipulation are generally not considered eligible transformations: Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
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Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:
- Drawings can be corrected, revised, or added if no new matter is introduced.
- The applicant must submit a proposed drawing correction in reply to the Office action.
- For non-provisional applications, replacement sheets of corrected drawings must be submitted.
- For provisional applications, corrected drawings may be submitted as an amendment to the application.
The MPEP states: ‘Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.’ This ensures that the entire drawing set remains consistent and complete.
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Yes, you can change the order of inventors’ names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):
37 CFR 1.48(f) … allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).
To change the order of inventors’ names, you must:
- Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
- Pay the processing fee set forth in 37 CFR 1.17(i).
Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.
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To correct inventorship in a provisional application, you must follow the procedure outlined in 37 CFR 1.48(d). The requirements include:
- A request signed by a party set forth in 37 CFR 1.33(b) to correct the inventorship, identifying each inventor by their legal name
- The processing fee set forth in 37 CFR 1.17(q)
The MPEP advises, When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors.
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For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:
- If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
- If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.
The MPEP further states:
“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”
When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.
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Submitting informal drawings in a patent application can have several consequences:
- The application may be considered incomplete, potentially affecting the filing date.
- The examiner may object to the drawings and require formal drawings to be submitted.
- It may delay the examination process.
- In some cases, it could result in a loss of patent rights if not corrected in time.
MPEP 608.02(b) states: ‘The Office no longer considers drawings as formal or informal; drawings are either acceptable or not acceptable. Drawings will be accepted by the Office of Patent Application Processing (OPAP) if the drawings meet the requirements of 37 CFR 1.84(a), (b), (c), and (e) and are capable of reproduction.’
It’s important to note that while the USPTO may accept informal drawings initially, they may still be objected to during examination, requiring corrections to be made.
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An oath is a sworn statement made before a person authorized to administer oaths, while a declaration is a written statement that can be used in lieu of an oath. According to MPEP 602, “A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68.” Declarations are often preferred because they don’t require appearing before an official and are easier to process electronically.
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The Brief Summary of Invention should be closely aligned with the claims in a patent application. MPEP 608.01(d) states, “Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.” Additionally, the MPEP emphasizes that “The brief summary of invention should be consistent with the subject matter of the claims.” This means that the summary should accurately reflect the invention as it is defined in the claims, focusing on the key aspects that make the invention patentable.
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What is the ‘infringement test’ for dependent claims in patent applications?
The ‘infringement test’ is a crucial concept in determining the proper dependency of claims in patent applications. As described in MPEP 608.01(n):
‘One test for a proper dependent claim is that the dependent claim must be narrower than the claim(s) from which it depends. In other words, if a dependent claim does not further limit the scope of the claim(s) from which it depends, it is not a proper dependent claim.’
The infringement test states that:
- Any subject matter that would infringe the independent claim must also infringe the dependent claim.
- If it’s possible to infringe the independent claim without infringing the dependent claim, the dependent claim is improper.
This test ensures that dependent claims properly narrow the scope of the claims they depend from, maintaining the hierarchical structure of patent claims.
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How does the IDS requirement differ for continuation-in-part applications?
For continuation-in-part (CIP) applications, the Information Disclosure Statement (IDS) requirements have some specific considerations. According to MPEP 609.02:
‘For continuation-in-part applications, applicant should submit an information disclosure statement complying with the content requirements of 37 CFR 1.98 at the time of filing of the continuation-in-part application.’
This means that for CIP applications:
- A new IDS should be submitted with the CIP application filing
- The IDS should include all information material to patentability of the newly added subject matter
- Previously cited information from the parent application should be re-cited if it’s still material to the claims in the CIP
It’s important to note that the duty of disclosure extends to the new subject matter introduced in the CIP, so applicants should be thorough in their IDS submissions for these types of applications.
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When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
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To correct inventorship in a provisional patent application, the following steps must be taken:
- Submit a request signed by a party set forth in 37 CFR 1.33(b)
- Identify each inventor by their legal name in the request
- Pay the processing fee set forth in 37 CFR 1.17(q)
- When adding an inventor, file a corrected application data sheet or a new cover sheet with the residence of all inventors
The MPEP states: 37 CFR 1.48(d) provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application. 37 CFR 1.48(d) requires that the submission include: (1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by their legal name; and (2) the fee set forth in 37 CFR 1.17(q).
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When there are inconsistencies between the Application Data Sheet (ADS) and other documents, the ADS generally takes precedence. According to MPEP 601.05(a):
Information in the Application Data Sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor’s oath or declaration.
However, it’s important to note that this only applies when the inconsistent information is supplied at the same time. If the inconsistency arises later, a corrected ADS may be required to update the information.
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What is the significance of copendency in continuation applications?
Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’
The significance of copendency includes:
- Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
- Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
- Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.
Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.
For more information on continuation application, visit: continuation application.
For more information on copendency, visit: copendency.
For more information on patent priority, visit: patent priority.
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
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How does the USPTO handle situations where an incorrect inventor is named in a patent application?
The USPTO has several mechanisms to address situations where an incorrect inventor is named in a patent application. According to MPEP 2157:
- Derivation proceeding under 35 U.S.C. 135
- Correction of inventorship under 37 CFR 1.48
- Rejection under 35 U.S.C. 101 and 35 U.S.C. 115
The MPEP states: “A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“
The appropriate action depends on the specific circumstances of the case and when the error is discovered.
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A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.
While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].
CPAs allow applicants to:
- Continue prosecution of a previously filed design application
- Make amendments or corrections, such as deleting a named inventor
- Potentially receive further examination without filing a new application
For more detailed information on CPAs, refer to MPEP § 201.06(d).
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
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Can the order of joint inventors’ names be changed after filing a patent application?
Yes, the order of joint inventors’ names can be changed after filing a patent application, but it requires a specific process. The MPEP 602.09 states:
“The order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application papers unless changed by request.”
To change the order of inventors’ names:
- Submit a request to the USPTO
- Provide a statement from all the joint inventors agreeing to the change
- Pay any required fees
It’s important to note that changing the order doesn’t affect inventorship rights but may impact how the patent is cited in literature. The request should be made before the patent is granted for it to appear in the correct order on the issued patent.
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The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
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The requirement for an inventor’s citizenship in patent applications has changed:
- For applications filed on or after September 16, 2012: Citizenship is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.
- For nonprovisional applications filed before September 16, 2012: Citizenship was required under pre-AIA 35 U.S.C. 115.
As stated in the MPEP: “For applications filed on or after September 16, 2012, the citizenship of the inventor is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.”
For older applications, if an inventor is not a citizen of any country, a statement to this effect is accepted as satisfying the statutory requirement.
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Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
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Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
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The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
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The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
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When illustrating improvements on existing inventions, patent drawings should follow specific guidelines as outlined in MPEP 608.02(d):
- Show the improved portion disconnected from the old structure
- In a separate view, show only enough of the old structure to demonstrate the connection with the improvement
The MPEP cites 37 CFR 1.83(b): When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
This approach helps to clearly distinguish the new, improved elements from the existing technology.
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The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
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In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
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A ‘person to whom the inventor has assigned or is under an obligation to assign the invention’ refers to an individual or entity that has received rights to the invention through a legal agreement or contract. This concept is important in patent applications filed on or after September 16, 2012, as explained in MPEP 409.05:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
This provision allows assignees or those with a contractual right to the invention to file patent applications, even if they are not the original inventors.
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A provisional patent application requires a cover sheet with specific identifying information. According to the MPEP:
“A cover sheet providing identifying information is required for a complete provisional application. In accordance with 37 CFR 1.51(c)(1) the cover sheet must state that it is for a provisional application, it must identify and give the residence of the inventor or inventors, and it must give a title of the invention.”
The cover sheet must include:
- Statement that it is for a provisional application
- Inventor(s) identification and residence
- Title of the invention
- Name and registration number of the attorney or agent (if applicable)
- Docket number (if applicable)
- Correspondence address
- Statement regarding federally sponsored research or development (if applicable)
- Name of the government agency and contract number (if developed under a government contract)
For more details on provisional application requirements, refer to MPEP § 201.04.
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To qualify for micro entity status, an applicant must meet the following requirements:
- Qualify as a small entity
- Not be named as an inventor on more than 4 previously filed patent applications
- Not have a gross income exceeding 3 times the median household income in the previous calendar year
- Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit
Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:
“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”
To constitute a valid joint research agreement, the following elements must be present:
- Written agreement
- Signed by all parties
- Specification of the subject matter of the invention
- Indication of the field of the invention
- In effect as of the effective filing date of the claimed invention
It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.
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Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
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What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):
“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”
This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).
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Cross-noting in patent applications refers to the process of recording and verifying information about prior applications, including U.S. and foreign applications, for which benefit or priority is claimed. This information is typically noted on the bibliographic data (bib-data) sheet of the application and is used to ensure accurate representation of priority claims on the front page of a printed patent.
According to MPEP 202, “The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.”
The function-way-result test is a key aspect of determining equivalence under the doctrine of equivalents. MPEP 2186 references this test as follows:
“[A]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.”
This test evaluates whether a substitute element in an accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element in the patented invention.
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Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:
- Claiming Priority:
- Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
- Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
- Governed by 37 CFR 1.55 for foreign priority claims
- Claiming Benefit:
- Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
- Typically used for continuation, divisional, or continuation-in-part applications
- Governed by 37 CFR 1.78
The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”
What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?
The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):
“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”
Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.
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According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP 2109
The MPEP further clarifies:
“[T]here is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
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When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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According to 35 U.S.C. 113, drawings are required ‘where necessary for the understanding of the subject matter sought to be patented.’ Specifically:
- For applications filed on or after December 18, 2013 (except design applications), drawings are not required to receive a filing date, but may still be necessary to fully disclose the invention.
- For applications filed before December 18, 2013, drawings were required at filing if necessary for understanding the invention.
- Design applications must include drawings to receive a filing date.
The USPTO recommends including drawings in most cases, as they help ensure the requirements of 35 U.S.C. 113 are met for any claimed invention.
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The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
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Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):
“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”
This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
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While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:
- Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
- Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
- Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
- Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.
The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.
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The MPEP provides several examples of concepts and products that courts have identified as laws of nature or natural phenomena, which are not patentable. Some of these include:
- Isolated DNA
- Cloned farm animals
- Correlations between DNA variations and allele presence
- Metabolic correlations in the body
- Mathematical formulas (e.g., E=mc²)
- Electromagnetic signals
- Qualities of bacteria
- Single-stranded DNA fragments (primers)
- Chemical principles
- Cell-free fetal DNA in maternal blood
The MPEP Section 2106.04(b) states: “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter under Section 101. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity.”
These examples illustrate that naturally occurring phenomena and fundamental scientific principles are generally not eligible for patent protection.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s):
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.’”
The USPTO’s stance is based on the principle that claims should be self-contained and clearly define the invention without relying on external references. This approach ensures clarity and avoids potential ambiguity in interpreting the scope of the claims.
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No, sequence listings or tables should not be duplicated in both the drawings and the specification of a patent application. The MPEP 608.02(d) clearly states:
If an application filed under 35 U.S.C. 111 or under 35 U.S.C. 371 includes a sequence listing or a table, such a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification.
This requirement helps to avoid redundancy and potential inconsistencies between the drawings and the specification. Applicants should include sequence listings and tables in the appropriate sections of the specification only.
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35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(B): “excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(C): “excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, ‘were owned by the same person or subject to an obligation of assignment to the same person.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
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When referencing figures in the Brief Description of Drawings section of a patent application, you should:
- Refer to each figure by its number (e.g., Figure 1, Figure 2)
- Provide a brief explanation of what each figure represents
The MPEP 608.01(f) states:
The specification must contain or be amended to contain a brief description of the several views of the drawings.
For example:
Figure 1 is a perspective view of the invented device.
Figure 2 is a cross-sectional view of the device shown in Figure 1.
Keep the descriptions concise and avoid detailed explanations, which belong in the Detailed Description section.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
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Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP § 605 outlines these changes:
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
Key changes include:
- Assignees can now be listed as the applicant
- Persons with sufficient proprietary interest can file on behalf of the inventor
- The inventor is no longer required to be listed as the applicant
These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
Generally, the preamble limits the claim if:
- It recites essential structure or steps
- It’s necessary to give life, meaning, and vitality to the claim
- It’s used to define the scope of the claimed invention
As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”
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No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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No, modifications cannot be shown in broken lines on figures that show another form of the invention in solid lines. This is based on the principle established in Ex parte Badger, 1901 C.D. 195, 97 OG 1596 (Comm’r Pat. 1901). The MPEP section 608.02(f) states:
“Modifications may not be shown in broken lines on figures which show in solid lines another form of the invention.”
This rule ensures clarity and prevents confusion in patent drawings by keeping different forms of the invention visually distinct.
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The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:
- Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
- Electronic filing systems may be available 24/7, but the official filing date will be the next business day
MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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Yes, a patent can be reinstated after expiration due to non-payment of maintenance fees under certain conditions. The MPEP 2590 outlines the process for patent reinstatement:
“The patent may be reinstated if the delay in payment of the maintenance fee was unintentional.”
Key points about patent reinstatement:
- A petition for reinstatement must be filed within 24 months from the expiration date.
- The petition must include a statement that the delay was unintentional.
- All required maintenance fees and any applicable surcharges must be paid.
- The Director of the USPTO must determine that the delay was indeed unintentional.
It’s important to note that the reinstatement process is not automatic and requires a formal petition and fee payment.
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Showing modified forms of construction in the same figure is objectionable under 37 CFR 1.84(h)(5). The MPEP section 608.02(f) provides a form paragraph (6.22.05) that examiners can use to object to such drawings:
“The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view.”
This objection is made to ensure clarity in patent drawings and to prevent confusion between different forms or modifications of the invention. Applicants are required to submit corrected drawing sheets in compliance with 37 CFR 1.121(d) to address this objection.
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The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with this requirement.
According to the MPEP, “These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability.”
In essence, the utility requirement ensures that patented inventions are useful and serve a practical purpose.
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The “ready for patenting” requirement is the second prong of the Pfaff test for determining if an invention was “on sale” for the purposes of the on-sale bar. According to MPEP 2133.03(b), an invention is “ready for patenting” when either:
- The invention is reduced to practice; or
- The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.
This requirement ensures that the invention was sufficiently developed at the time of the offer for sale. It prevents inventors from claiming the on-sale bar doesn’t apply because the invention wasn’t complete, even if they were commercially exploiting the concept.
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
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The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02:
“If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well.”
By requiring disclosure of the best mode, the patent system prevents inventors from keeping their most valuable insights secret while still obtaining patent protection. This enhances the quality of information available to the public and other inventors, fostering further innovation in the field.
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Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch
. To access these records:
- Visit the USPTO Assignment Search website
- Enter the relevant patent or application number, assignee name, or other search criteria
- Review the search results for assignment information
This online database provides public access to assignment records, allowing for easy verification of patent ownership.
Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
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If an inventor has no middle name, their name should be formatted using only their given name (first name) and family name (last name). The MPEP 602.08(b) provides guidance on this:
If an inventor does not have a middle name or initial, then the field for middle name or initial should be left blank.
It’s important to note that the absence of a middle name should not be confused with the use of initials. If an inventor commonly uses initials in place of their full given name, this should be indicated appropriately on the application.
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How do I update my address for patent correspondence with the USPTO?
To update your address for patent correspondence with the USPTO:
- Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012.
- Use Form PTO/SB/122 for applications filed before September 16, 2012.
- Submit the form to the USPTO’s Mail Stop Post Issue division.
The MPEP states: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration (OPLA).” (MPEP 2805)
Ensure you follow the proper procedures to maintain accurate communication channels with the USPTO regarding your patent.
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A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
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For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
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No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
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The standard for enablement in prior art references is consistent across all types of prior art, regardless of their origin or format. As stated in MPEP 2121:
“The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.”
An enabling disclosure in a prior art reference must describe the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. However, it’s important to note that:
“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”
This means that a prior art reference can be considered enabling even if it doesn’t prove that the described invention actually works, as long as it provides enough information for a skilled artisan to practice the invention.
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Patent Loans (10)
The effective interest rate for a patent loan will be in the neighborhood of 9-12%.
nnnnThe patent loan insurance product has a premium that is paid out of the loan proceeds, as well as due diligence fees and insurance premiums for the required enforcement and defense insurance.
nnnnWhen you include interest paid back to a lender, the effective interest rate of the loan will be approximately 9-12%.
nnnnPlease note that this rate is much lower than angel or venture equity, which is typically 50% or more. By taking a loan against the assets you already created, you can get much further without having the negative effects of selling your equity to investors.
nWe typically consider patents as the primary asset in an IP-backed loan, although we also consider trade secrets and company data as valuable assets to loan against. A software company’s code base may also be collateralized, but typically as a secondary asset.
nnnnTrademarks occasionally can be considered, but they are on a case-by-case basis.
nnnnA typical borrower may have at least a handful of patents, but often has 10-50 patent assets as collateral.
nThe patent loan program requires several items about your patents and your business plan. This is not a complete list.
nnnn100% ownership of your patents.
nnnnYour patents must be completely unencumbered and must be owned by the operating company. Some investors will attach liens to intellectual property, which is a non-starter. In many cases, the inventors may have “forgotten” to assign their rights to a company. There are countless ways that a startup company may not have full, unrestricted rights to “their” IP, but we will require that this be completed before applying for a loan.
nnnnThe patents must be of the highest quality.
nnnnEverybody believes their patents are good, but sadly, at least 95% of all patents are worthless. Patents fail our due diligence for many different reasons, such as being over-broad, not having any prior art references, being poorly written, mistakes in patent prosecution, and countless others.
nnnnOne of the biggest ways patents fail is that there may be other ways to solve the same problem. If the patent does not capture the single best way to solve a problem, your competitor will just use the alternative solution and never need to take a license from you.
nnnnThe business needs to be at the right stage.
nnnnA good loan candidate can put capital to use – but must be able to repay the loan. Startups that are in the ‘idea phase’ are not good candidates because they probably have not built out their manufacturing, marketing, and sales pipelines.
nnnnA good candidate has tested a marketing and sales funnel and knows their Cost to Acquire a Customer, along with a projected Lifetime Value. They have developed enough sales to know what works and what doesn’t, and they can put a large amount of cash to use to generate revenue quickly.
nnnnAnother type of candidate needs operating capital, such as to purchase inventory for an existing order or for ongoing expansion. These companies typically have access to small amounts of capital, but a collateralized loan will give them much more.
nnnnYou need to apply.
nnnnWe are anxiously waiting your phone call. Please contact us and discuss your situation. In many cases, we can process a loan in 2-4 weeks.
A patent loan will come with several other components, including insurance for patent enforcement and patent defense.
nnnnBecause a patent loan is specifically designed to help you expand your business, we want you to focus on generating revenue, not litigation. Therefore, we give you at least $2,000,000 in patent enforcement insurance and patent defense insurance.
nnnnThe due diligence process for the loan program will include due diligence for the other insurance products.
We prefer to provide loans to revenue generating companies, but we will consider pre-revenue companies in some cases.
nnnnFor pre-revenue companies, our patent financing option will build out your portfolio quickly so that it will be ready once your company starts generating revenue.
nnnnThe loan program is a loan, after all, and we will evaluate your company to see if we believe that you will be able to repay the loan. Taking out a loan is much different than selling equity, and our focus is on real revenue generation.
nnnnPre-revenue companies need to show that they are very close to revenue. In general, we want to see that the company is addressing a real need in the market, that there is economic value in the product or service being sold, and that the cost of goods leaves a solid profit margin. We also want to see that the cost to acquire a customer is known and that there is a delivery pipeline to satisfy that customer.
nnnnIn short, we want to see that there is a legitimate business opportunity in your company.
nnnnPlease note that we want to have real data to support the assumptions, such as experiments in customer acquisition methods, quantified analyses of the costs to build the product or supply the services, procedures for after-sale support, or whatever is appropriate for your business. We are looking to loan money to those companies who can really put the money to use, and we are less likely to provide funding for the experimental or developmental phases of building your company.
Our goal is *not* to get your patents. Our goal is to help you make the patents more valuable.
nnnnA patent loan will give you capital, and we want to see that the loan proceeds are being used to make the patents more valuable. Typically, we look for opportunities where the loan goes to marketing and sales – all designed to raise revenue levels for the patented product.
nnnnWhen you sell more product that is protected by your patents, your patents (our collateral) has more value.
nnnnWe need to see you succeed.
nNo. The patent loan program does not normally require a personal guarantee.
nnnnWe provide an insurance product that will guarantee a lender in case of a default. However, a lender may still have the final say as to whether or not to require a personal guarantee.
nPatent valuation is a difficult subject because there are many different people using many different techniques to come up with a ‘value.’
nnnnIn general, the only meaningful metric of patent value is revenue.
nnnnEither you are selling a patented product, or an infringer is selling an infringing product.
nnnnThe value of the patent is determined by comparing the patented product against a competing product that does not infringe the patent. If we can tease apart the extra amount of sales that comes from the patented product, then we have the best indicator of the patent value.
nnnnIf there are no sales of the product, the patent does not have realizable value – YET. Once sales are established and we have an apples-to-apples comparison to a non-infringing product, only then can be put a meaningful value on the patent.
nnnnnWe provide an insurance policy that will guarantee a lender (typically a bank) using the patents as collateral.
nnnnThe Collateral Protection Insurance product is similar to mortgage insurance, where the bank has protection if there is a default on the loan.
nnnnThe CPI product requires investment-grade patents and a solid business plan. The patents must be litigation-worthy, but must also capture real economic value.
nnnnYour patents and your business plan will undergo a due diligence analysis, where the patents will undergo a “patent busting” search, looking for any weaknesses. Your business plan will also need to show the use of funds and the way you are going to put the money to use.
nnnnAs part of the patent loan program, you will get at least $2,000,000 in patent enforcement and patent defense insurance. We want you to spend the loan proceeds by growing your company and generating revenue – not by litigating the patents in court.
Infringed patents can help (or hurt) your chances for a patent-backed loan, depending on the situation.
nnnnIn some cases, we put together an enforcement plan alongside a loan, where the loan gets paid off with the proceeds from the enforcement. In those cases, the enforcement and loan work hand-in-hand.
nnnnIn general, infringement of your patents is a good indicator that your patents have value.
nPatent Procedure (171)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
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No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:
- For name changes:
Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
- For mergers:
Documents of merger are also proper links in the chain of title.
Recording these changes ensures:
- The USPTO has up-to-date information on patent ownership
- Third parties can accurately identify the current patent owner
- The chain of title remains clear and unbroken, which can be important for future transactions or litigation
- Compliance with legal requirements for maintaining patent rights
Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:
“Joint inventors are treated as joint owners of the invention unless there is an assignment.”
Key aspects of joint ownership include:
- Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
- Profits do not need to be shared unless there’s a specific agreement.
- All joint owners must agree to sell or assign the entire patent to a third party.
- In infringement suits, all joint owners must be joined as plaintiffs.
It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.
For more information on joint inventors, visit: joint inventors.
For more information on joint ownership, visit: joint ownership.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:
- The filing date of the CPA request
- The parent application number
The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established.
Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.
For more information on USPTO filing procedures, visit: USPTO filing procedures.
Claiming priority to a PCT international application can be done in two ways:
- In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
- In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)
In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).
A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.
According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.
This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on Patent Application Process, visit: Patent Application Process.
To correct assignee information on an issued patent, you must follow these steps:
- Submit a request for a certificate of correction under 37 CFR 1.323.
- Ensure that a request under 37 CFR 3.81(b) has been granted.
- Confirm that the assignment was submitted for recordation before the patent was issued.
According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”
The request should be directed to the Office of Petitions and include:
- The processing fee required by 37 CFR 1.17(i)
- A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
- A statement that the assignment was submitted for recordation before the patent was issued
- A request for a certificate of correction under 37 CFR 1.323 with the associated fee
For more information on assignee information, visit: assignee information.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on Patent correction, visit: Patent correction.
For more information on USPTO procedures, visit: USPTO procedures.
What happens if a patent assignment is not recorded with the USPTO?
Failing to record a patent assignment with the USPTO can have significant consequences:
- Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
- Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
- Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’
While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.
For more information on USPTO, visit: USPTO.
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
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The USPTO has specific provisions for handling partial assignees in patent issuance:
- If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
- If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.
This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.
To correct an error in a recorded assignment document at the USPTO, you have two main options:
- Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
- Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.
As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”
For more information on assignment correction, visit: assignment correction.
For more information on cover sheet, visit: cover sheet.
For more information on USPTO, visit: USPTO.
Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
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If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on late submission, visit: late submission.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:
“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”
By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.
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An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.
According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”
The petition to restore the right of priority must include:
- The priority claim identifying the prior foreign application
- The petition fee
- A statement that the delay in filing was unintentional
The USPTO may require additional information to establish that the delay was unintentional.
For more information on foreign priority, visit: foreign priority.
For more information on priority restoration, visit: priority restoration.
For more information on unintentional delay, visit: unintentional delay.
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
- An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
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MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
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35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:
- National applications based on international applications
- International applications based on foreign applications
The MPEP states:
“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”
“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”
These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.
Yes, an abandoned application can still be used as a priority document for subsequent applications, provided that the priority claim is made within the specified time limits. The abandoned status of the earlier application does not affect its ability to serve as a basis for priority. For more information on priority claims, refer to MPEP 201 and MPEP 211.
The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
(MPEP 2112)
However, once the examiner establishes a prima facie case of inherency, the burden shifts to the applicant. As stated in the MPEP: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.”
The applicant may rebut this by providing objective evidence that the prior art does not necessarily possess the claimed characteristics. The standard of proof is similar to that required for product-by-process claims, as discussed in MPEP 2113.
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Can a divisional application be filed without a restriction requirement?
While divisional applications are typically filed in response to a restriction requirement, they can be filed voluntarily without one. The MPEP 201.06 states:
“A divisional application is often filed as a result of a restriction requirement made by the examiner.”
However, the use of “often” implies that this is not always the case. Applicants may choose to file a divisional application voluntarily if they:
- Recognize distinct inventions in their application
- Want to pursue different claim scopes separately
- Need to address potential unity of invention issues proactively
It’s important to note that voluntarily filing a divisional application without a restriction requirement may affect the application of the safe harbor provision under 35 U.S.C. 121, which protects against double patenting rejections in certain cases.
For more information on Divisional application, visit: Divisional application.
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
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A Sequence Identifier (SEQ ID NO) is a unique number assigned to each disclosed nucleic acid and/or amino acid sequence in a patent application. According to MPEP 2422.01:
“37 CFR 1.821(d) and 37 CFR 1.823(a)(5) require that each disclosed nucleic acid and/or amino acid sequence in the application appear separately in the “Sequence Listing”, with each sequence further being assigned a sequence identifier, referred to as “SEQ ID NO:” or the like.“
Key points about Sequence Identifiers:
- They must begin with 1 and increase sequentially by integers.
- Each sequence must have a different number for identification.
- Sequences should be presented in numerical order in the “Sequence Listing” where practical.
- When discussing a sequence in the description or claims, a reference to its SEQ ID NO is required at all occurrences.
- SEQ ID NOs can be used to discuss or claim parts of a sequence (e.g., “residues 14 to 243 of SEQ ID NO:23”).
The use of SEQ ID NOs provides a shorthand way for applicants to discuss and claim their inventions without restricting how an invention can be claimed.
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If there’s an error in the preprinted prior application data, the following steps should be taken:
- If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
- After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
- If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
- In some cases, a petition for an unintentionally delayed benefit claim may also be required.
The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)
What is the significance of drawings in proving conception for a patent?
Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:
“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“
In this context, drawings are significant because:
- They provide a visual representation of the inventor’s mental picture of the invention.
- Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
- Drawings can help prove that the invention was “ready for patenting” at the time of conception.
- They can serve as corroborating evidence to support the inventor’s testimony about conception.
The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.
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Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):
“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”
The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:
- A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
- A specific improvement to the way computers operate (Enfish)
- A particular method of incorporating virus screening into the Internet (Symantec Corp)
However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”
The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.
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The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:
“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”
This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.
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The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:
“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”
This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.
For more information on non-English language, visit: non-English language.
For more information on provisional application, visit: provisional application.
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
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For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).
According to MPEP ¶ 2.34:
“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”
This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on CPA, visit: CPA.
For more information on specific reference, visit: specific reference.
The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:
“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”
This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.
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Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:
- Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
- Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.
The MPEP explicitly states in MPEP ¶ 2.01:
“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”
This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).
For more information on Divisional application, visit: Divisional application.
For more information on patent law, visit: patent law.
For more information on provisional application, visit: provisional application.
For more information on USPTO, visit: USPTO.
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:
1. Continuations: A design application can be a continuation of a prior design application.
2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.
3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.
The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”
It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.
MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
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The case of Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990) is mentioned in MPEP 2410.01 in the context of biological material deposits. This case is significant because it reinforces the requirement that all restrictions on access to deposited biological material must be removed upon patent grant, with only the specific exception allowed under 37 CFR 1.808(b).
The MPEP cites this case to emphasize that compliance with the Budapest Treaty alone is not sufficient to meet all U.S. requirements for biological deposits. Specifically, the MPEP states: Consequently, the mere indication that a deposit has been made and accepted under conditions prescribed by the Budapest Treaty would satisfy all conditions of these regulations except the requirement that all restrictions on access be removed on grant of the patent. Ex parte Hildebrand, 15 USPQ2d 1662 (Bd. Pat. App. & Int. 1990).
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AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
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Can a continuation-in-part application claim priority to a provisional application?
Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.
Key points to understand:
- Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
- New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
- One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
- Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.
Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.
For more information on new matter, visit: new matter.
For more information on provisional application, visit: provisional application.
The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:
- It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
- In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
- In Step 2B, it can contribute to the “significantly more” analysis.
- A particular machine can potentially transform an abstract idea into patent-eligible subject matter.
MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”
The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
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The front page of a patent includes the following information regarding foreign priority claims:
- The country of the foreign application
- The filing date of the foreign application
- The number of the foreign application
This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
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Sequence identifiers (SEQ ID NOs) are crucial in patent applications containing nucleotide and/or amino acid sequences. According to MPEP 2421.02:
- Each disclosed nucleotide and/or amino acid sequence must be assigned a unique SEQ ID NO.
- SEQ ID NOs must be used to identify sequences in the specification, claims, and drawings.
- The SEQ ID NO should be placed adjacent to the sequence or used in a table correlating sequence names with their corresponding SEQ ID NOs.
The MPEP states: “The rules require that the sequence identifiers must be used in all instances where the sequences are disclosed in a patent application.” This ensures clear and consistent referencing of sequences throughout the application.
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A ‘bypass’ continuation application is a specific type of continuation application that is filed under 37 CFR 1.53(b) to ‘bypass’ the national stage of an international application. As explained in MPEP 201.06(c):
“A continuation application filed under 37 CFR 1.53(b) may be filed as a continuation of an international application designating the United States without entering the national stage under 35 U.S.C. 371. This is often referred to as a ‘bypass’ continuation application.”
This type of application allows applicants to pursue patent protection in the U.S. based on their international application without going through the formal national stage entry process. It can be advantageous in certain situations, such as when an applicant wants to modify claims or add new matter before U.S. examination.
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
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The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
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Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:
“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”
Antecedent basis serves several important functions:
- Ensures clarity and definiteness of claim terms
- Provides a link between the claims and the specification
- Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
- Facilitates proper interpretation of claim scope
To maintain proper antecedent basis:
- Introduce elements in the claims with “a” or “an”
- Refer back to previously introduced elements with “the” or “said”
- Ensure that all claim terms have support in the specification
By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.
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What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
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English translations of non-English language foreign applications are not always required. However, 37 CFR 1.55(g)(3) specifies three situations where an English translation may be necessary:
“An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference or derivation proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.”
If a translation is required, it must be filed with a statement certifying that the translation is accurate. This ensures that the USPTO can properly evaluate the priority claim when necessary for examination or proceedings.
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Yes, an applicant can appeal a secrecy order issued on their patent application. According to MPEP 120, “An appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied.” This means that the applicant must first:
- Petition for rescission of the secrecy order
- If the petition is denied, then appeal to the Secretary of Commerce
The appeal process is governed by the provisions of 35 U.S.C. 181 and provides a mechanism for applicants to challenge the imposition of a secrecy order.
According to MPEP 608.02(d), conventional features in patent drawings should be illustrated as follows:
- Use graphical drawing symbols
- Use labeled representations (e.g., a labeled rectangular box)
The MPEP states: However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).
This approach simplifies the drawings while still providing necessary information about conventional elements. It allows the focus to remain on the novel aspects of the invention while acknowledging the presence of standard components.
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Incorporating by reference in patent applications can have significant impacts:
- It allows applicants to include the content of another document without reproducing it in full.
- The incorporated material becomes part of the application as if it were explicitly included.
- It can provide support for claims and help meet disclosure requirements.
MPEP 211.05 mentions:
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.
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The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:
A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.
This means that:
- If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
- The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
- Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.
However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.
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If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:
- File a petition to the USPTO, accompanied by the required petition fee
- Provide arguments and evidence supporting why the application should be granted the desired filing date
- If alleging no defect exists, include a request for a refund of the petition fee
The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.
Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.
It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.
For more information on patent application review, visit: patent application review.
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.
The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’
For more information on patent application requirements, visit: patent application requirements.
Form PTO/AIA/82 is a USPTO form used by the applicant for patent to appoint one or more patent practitioners as power of attorney. This form consists of three parts:
- Part A (PTO/AIA/82A): A transmittal page used to identify the application to which the power of attorney is directed. It must be signed by a proper 37 CFR 1.33(b) party.
- Part B (PTO/AIA/82B): The actual power of attorney, which may also specify the correspondence address. This part must be signed by the applicant.
- Part C (PTO/AIA/82C): An optional page that may be used to appoint up to 10 patent practitioners by name and registration number.
The MPEP notes that “PTO/AIA/82 may be used like a general power of attorney, if desired.” For example, an officer of a juristic entity assignee could sign Part B, leaving the “Application Number” and “Filing Date” boxes empty. Then, a patent practitioner could complete and sign one Part A for each respective application and file a copy of Part B with each Part A.
It’s important to note that the “Application Number” and “Filing Date” boxes on Part B must be completed to identify the application if Part A or an equivalent is not filed with Part B. These boxes may not be filled in by a patent practitioner after Part B has been signed by the applicant.
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Excess claims fees are additional fees charged for patent applications that contain more than a certain number of claims. According to the MPEP:
- 37 CFR 1.16(h) sets the fee for each independent claim in excess of three.
- 37 CFR 1.16(i) sets the fee for each claim (independent or dependent) in excess of twenty.
The MPEP states: The excess claims fees specified in 37 CFR 1.16(h) and (i) apply to any excess claims fee paid, regardless of the filing date of the application and regardless of the date on which the claim necessitating the excess claims fee payment was added to the application.
These fees also apply to reissue applications, but the claims in the original patent are not counted when determining excess claims fees for a reissue application. For applications filed without claims, excess claims fees are due when the excess claims are presented in the application.
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While the American Inventors Protection Act (AIPA) introduced the 18-month publication rule, there are several exceptions to this requirement. According to MPEP 901.03, an application shall not be published if it falls under any of the following categories:
- (A) no longer pending;
- (B) subject to a secrecy order under 35 U.S.C. 181;
- (C) a provisional application filed under 35 U.S.C. 111(b);
- (D) an application for a design patent filed under 35 U.S.C. 171;
- (E) an application for an International design application filed under 35 U.S.C. 382; or
- (F) a reissue application filed under 35 U.S.C. 251.
Additionally, an application will not be published if the applicant submits a request for nonpublication at the time of filing.
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When claiming benefit to multiple prior applications, applicants must carefully establish a chain of copendency. The MPEP 211.01(b) provides guidance:
“The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.”
Key points to remember:
- References must be made in each intermediate application in the chain.
- A specific reference is required for each prior-filed application and cannot be incorporated by reference from a prior application.
- There is no limit to the number of prior applications through which a chain of copendency may be traced.
It’s crucial to properly reference all prior applications to ensure the desired benefit claims are recognized. Failure to do so may result in the need for a petition under 37 CFR 1.78 and payment of a petition fee.
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What is the difference between a correspondence address and a fee address in USPTO filings?
In USPTO filings, the correspondence address and fee address serve different purposes:
- Correspondence Address: Where the USPTO sends all official communications regarding a patent application or patent.
- Fee Address: Where the USPTO sends maintenance fee reminders for granted patents.
The MPEP clarifies:
The correspondence address is the address associated with the Customer Number to which correspondence is directed. The fee address is the address associated with the Customer Number to which maintenance fee reminders are directed.
(MPEP 403)
While these addresses can be the same, they don’t have to be. Applicants or patent owners might choose different addresses, for example, if a law firm handles prosecution but the company itself manages maintenance fees. Using a customer number allows for easy management of both addresses.
For more information on Correspondence Address, visit: Correspondence Address.
For more information on Customer Number, visit: Customer Number.
For more information on Fee Address, visit: Fee Address.
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
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The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:
- Obtain the caller’s full name, application number, and telephone number
- Verify the caller’s identity and authority to receive information
- Check Patent Data Portal or the application file to verify releasable information
- Return the call using a verified telephone number
Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.
What happens if an assignment document is not recorded at the USPTO?
If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:
‘An assignment, grant, or conveyance of a patent or application shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Office within three months from its date or prior to the date of such subsequent purchase or mortgage.’
In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.
For more information on assignment recording, visit: assignment recording.
For more information on legal implications, visit: legal implications.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
To record an assignment of a patent or patent application, the following requirements must be met:
- The assignment must be in writing.
- It must be signed by the assignor (the person or entity transferring ownership).
- The document must identify the patent or application by number.
- The assignment must be submitted to the USPTO along with the required fee.
According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.
For more information on patent assignment, visit: patent assignment.
For more information on recordation, visit: recordation.
For more information on USPTO, visit: USPTO.
How are historical patent assignment records maintained?
The USPTO maintains historical patent assignment records separately from more recent records. MPEP 301.01 explains:
‘The historical database of assignments is maintained separate and apart from the database of assignments affecting title recorded since 1980.’
This means that:
- Records prior to August 1980 are kept in a separate historical database
- These older records may not be available through the online Patent Assignment Search
- Accessing historical records may require different procedures or direct contact with the USPTO
For researchers or legal professionals needing access to pre-1980 assignment records, it’s advisable to contact the USPTO’s Patent and Trademark Resource Centers or the Assignment Recordation Branch for assistance.
What information is available in the USPTO’s assignment database?
The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:
‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’
The database typically includes:
- Patent or application numbers
- Names of assignors and assignees
- Dates of assignment execution and recording
- Brief descriptions of the interests conveyed
- Reel and frame numbers for locating documents
This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.
Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:
- Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
- Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”
These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.
For more information on multiple assignees, visit: multiple assignees.
For more information on partial assignees, visit: partial assignees.
For more information on patent issuance, visit: patent issuance.
Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:
“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”
This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.
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For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:
- The inventor(s)
- An assignee to whom the inventor has assigned the invention
- An obligated assignee to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’
The consequences of such actions can be severe, potentially including:
- Invalidation of the patent
- Criminal charges for fraud
- Disciplinary action against registered patent practitioners
It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.
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How do I cite non-English language documents in an IDS?
When citing non-English language documents in an Information Disclosure Statement (IDS), follow these guidelines:
- Provide a concise explanation of the relevance of the document.
- Include an English language translation or abstract if available.
- If a translation is not available, indicate the language of the document.
According to MPEP 609.04(a): “Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office.”
Properly citing non-English documents ensures the examiner can consider their relevance to your application.
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The MPEP provides guidance on what constitutes a valid mailing address for inventors in patent applications. According to MPEP 602.08(a):
“The inventor’s mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor’s home or business address is acceptable as the mailing address. A post office box is also acceptable.”
The mailing address should include the ZIP Code designation. It’s important to note that the address of an attorney with instructions to forward communications is not sufficient, as the purpose is to enable direct communication between the USPTO and the inventor if necessary.
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What are the consequences of not filing an IDS or submitting an incomplete IDS?
Failing to file an Information Disclosure Statement (IDS) or submitting an incomplete one can have serious consequences:
- Duty of Disclosure: Violating the duty of disclosure can lead to charges of inequitable conduct.
- Patent Invalidity: The patent may be held unenforceable if material information was intentionally withheld.
- Prosecution History Estoppel: Failure to disclose prior art may limit the scope of patent claims in future litigation.
MPEP 609 states: “The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by 37 CFR 1.97(b)-(d) and 1.98.”
It’s crucial to file a complete and timely IDS to avoid these potential pitfalls and ensure the validity and enforceability of your patent.
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Canadian patent agents must meet specific requirements to practice before the USPTO under limited recognition:
- They must be registered and in good standing as a patent agent under Canadian law.
- They must apply for limited recognition to the USPTO Director.
- They can only represent Canadian citizens or residents before the USPTO.
- Their representation is limited to the presentation and prosecution of patent applications of Canadian applicants.
As stated in MPEP 402.01: Canadian patent agents are not required to pass the regular patent bar examination to represent Canadian applicants. They need not seek formal recognition to practice before the Office.
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An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:
- Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
- 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.
As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.
For more information on USPTO procedures, visit: USPTO procedures.
What is the difference between recording a license and an assignment at the USPTO?
The main difference between recording a license and an assignment at the USPTO lies in the transfer of ownership rights:
- Assignment: Transfers ownership of the patent or application to another party.
- License: Grants permission to use the patent or application without transferring ownership.
According to MPEP 313: Other documents relating to interests in patents or applications will be recorded as provided in 37 CFR 3.11(a).
This includes licenses, which are recorded to provide notice of the agreement but do not change the ownership records at the USPTO.
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance:
- Article: “An ‘article’ includes a physical object or substance.”
- Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.”
- Change: “‘Transformation’ of an article means that the ‘article’ has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article.”
The MPEP also notes: A new or different function or use can be evidence that an article has been transformed.
It’s important to note that purely mental processes or data manipulation are generally not considered eligible transformations: Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
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Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:
- Drawings can be corrected, revised, or added if no new matter is introduced.
- The applicant must submit a proposed drawing correction in reply to the Office action.
- For non-provisional applications, replacement sheets of corrected drawings must be submitted.
- For provisional applications, corrected drawings may be submitted as an amendment to the application.
The MPEP states: ‘Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.’ This ensures that the entire drawing set remains consistent and complete.
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Yes, you can change the order of inventors’ names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):
37 CFR 1.48(f) … allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).
To change the order of inventors’ names, you must:
- Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
- Pay the processing fee set forth in 37 CFR 1.17(i).
Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.
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To correct inventorship in a provisional application, you must follow the procedure outlined in 37 CFR 1.48(d). The requirements include:
- A request signed by a party set forth in 37 CFR 1.33(b) to correct the inventorship, identifying each inventor by their legal name
- The processing fee set forth in 37 CFR 1.17(q)
The MPEP advises, When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors.
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For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:
- If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
- If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.
The MPEP further states:
“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”
When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.
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Submitting informal drawings in a patent application can have several consequences:
- The application may be considered incomplete, potentially affecting the filing date.
- The examiner may object to the drawings and require formal drawings to be submitted.
- It may delay the examination process.
- In some cases, it could result in a loss of patent rights if not corrected in time.
MPEP 608.02(b) states: ‘The Office no longer considers drawings as formal or informal; drawings are either acceptable or not acceptable. Drawings will be accepted by the Office of Patent Application Processing (OPAP) if the drawings meet the requirements of 37 CFR 1.84(a), (b), (c), and (e) and are capable of reproduction.’
It’s important to note that while the USPTO may accept informal drawings initially, they may still be objected to during examination, requiring corrections to be made.
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An oath is a sworn statement made before a person authorized to administer oaths, while a declaration is a written statement that can be used in lieu of an oath. According to MPEP 602, “A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68.” Declarations are often preferred because they don’t require appearing before an official and are easier to process electronically.
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The Brief Summary of Invention should be closely aligned with the claims in a patent application. MPEP 608.01(d) states, “Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.” Additionally, the MPEP emphasizes that “The brief summary of invention should be consistent with the subject matter of the claims.” This means that the summary should accurately reflect the invention as it is defined in the claims, focusing on the key aspects that make the invention patentable.
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What is the ‘infringement test’ for dependent claims in patent applications?
The ‘infringement test’ is a crucial concept in determining the proper dependency of claims in patent applications. As described in MPEP 608.01(n):
‘One test for a proper dependent claim is that the dependent claim must be narrower than the claim(s) from which it depends. In other words, if a dependent claim does not further limit the scope of the claim(s) from which it depends, it is not a proper dependent claim.’
The infringement test states that:
- Any subject matter that would infringe the independent claim must also infringe the dependent claim.
- If it’s possible to infringe the independent claim without infringing the dependent claim, the dependent claim is improper.
This test ensures that dependent claims properly narrow the scope of the claims they depend from, maintaining the hierarchical structure of patent claims.
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How does the IDS requirement differ for continuation-in-part applications?
For continuation-in-part (CIP) applications, the Information Disclosure Statement (IDS) requirements have some specific considerations. According to MPEP 609.02:
‘For continuation-in-part applications, applicant should submit an information disclosure statement complying with the content requirements of 37 CFR 1.98 at the time of filing of the continuation-in-part application.’
This means that for CIP applications:
- A new IDS should be submitted with the CIP application filing
- The IDS should include all information material to patentability of the newly added subject matter
- Previously cited information from the parent application should be re-cited if it’s still material to the claims in the CIP
It’s important to note that the duty of disclosure extends to the new subject matter introduced in the CIP, so applicants should be thorough in their IDS submissions for these types of applications.
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When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
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To correct inventorship in a provisional patent application, the following steps must be taken:
- Submit a request signed by a party set forth in 37 CFR 1.33(b)
- Identify each inventor by their legal name in the request
- Pay the processing fee set forth in 37 CFR 1.17(q)
- When adding an inventor, file a corrected application data sheet or a new cover sheet with the residence of all inventors
The MPEP states: 37 CFR 1.48(d) provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application. 37 CFR 1.48(d) requires that the submission include: (1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by their legal name; and (2) the fee set forth in 37 CFR 1.17(q).
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When there are inconsistencies between the Application Data Sheet (ADS) and other documents, the ADS generally takes precedence. According to MPEP 601.05(a):
Information in the Application Data Sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor’s oath or declaration.
However, it’s important to note that this only applies when the inconsistent information is supplied at the same time. If the inconsistency arises later, a corrected ADS may be required to update the information.
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What is the significance of copendency in continuation applications?
Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’
The significance of copendency includes:
- Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
- Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
- Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.
Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.
For more information on continuation application, visit: continuation application.
For more information on copendency, visit: copendency.
For more information on patent priority, visit: patent priority.
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
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How does the USPTO handle situations where an incorrect inventor is named in a patent application?
The USPTO has several mechanisms to address situations where an incorrect inventor is named in a patent application. According to MPEP 2157:
- Derivation proceeding under 35 U.S.C. 135
- Correction of inventorship under 37 CFR 1.48
- Rejection under 35 U.S.C. 101 and 35 U.S.C. 115
The MPEP states: “A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“
The appropriate action depends on the specific circumstances of the case and when the error is discovered.
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A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.
While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].
CPAs allow applicants to:
- Continue prosecution of a previously filed design application
- Make amendments or corrections, such as deleting a named inventor
- Potentially receive further examination without filing a new application
For more detailed information on CPAs, refer to MPEP § 201.06(d).
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
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Can the order of joint inventors’ names be changed after filing a patent application?
Yes, the order of joint inventors’ names can be changed after filing a patent application, but it requires a specific process. The MPEP 602.09 states:
“The order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application papers unless changed by request.”
To change the order of inventors’ names:
- Submit a request to the USPTO
- Provide a statement from all the joint inventors agreeing to the change
- Pay any required fees
It’s important to note that changing the order doesn’t affect inventorship rights but may impact how the patent is cited in literature. The request should be made before the patent is granted for it to appear in the correct order on the issued patent.
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The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
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The requirement for an inventor’s citizenship in patent applications has changed:
- For applications filed on or after September 16, 2012: Citizenship is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.
- For nonprovisional applications filed before September 16, 2012: Citizenship was required under pre-AIA 35 U.S.C. 115.
As stated in the MPEP: “For applications filed on or after September 16, 2012, the citizenship of the inventor is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.”
For older applications, if an inventor is not a citizen of any country, a statement to this effect is accepted as satisfying the statutory requirement.
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Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
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Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
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The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
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The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
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When illustrating improvements on existing inventions, patent drawings should follow specific guidelines as outlined in MPEP 608.02(d):
- Show the improved portion disconnected from the old structure
- In a separate view, show only enough of the old structure to demonstrate the connection with the improvement
The MPEP cites 37 CFR 1.83(b): When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
This approach helps to clearly distinguish the new, improved elements from the existing technology.
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The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
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In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
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A ‘person to whom the inventor has assigned or is under an obligation to assign the invention’ refers to an individual or entity that has received rights to the invention through a legal agreement or contract. This concept is important in patent applications filed on or after September 16, 2012, as explained in MPEP 409.05:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
This provision allows assignees or those with a contractual right to the invention to file patent applications, even if they are not the original inventors.
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A provisional patent application requires a cover sheet with specific identifying information. According to the MPEP:
“A cover sheet providing identifying information is required for a complete provisional application. In accordance with 37 CFR 1.51(c)(1) the cover sheet must state that it is for a provisional application, it must identify and give the residence of the inventor or inventors, and it must give a title of the invention.”
The cover sheet must include:
- Statement that it is for a provisional application
- Inventor(s) identification and residence
- Title of the invention
- Name and registration number of the attorney or agent (if applicable)
- Docket number (if applicable)
- Correspondence address
- Statement regarding federally sponsored research or development (if applicable)
- Name of the government agency and contract number (if developed under a government contract)
For more details on provisional application requirements, refer to MPEP § 201.04.
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To qualify for micro entity status, an applicant must meet the following requirements:
- Qualify as a small entity
- Not be named as an inventor on more than 4 previously filed patent applications
- Not have a gross income exceeding 3 times the median household income in the previous calendar year
- Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit
Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:
“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”
To constitute a valid joint research agreement, the following elements must be present:
- Written agreement
- Signed by all parties
- Specification of the subject matter of the invention
- Indication of the field of the invention
- In effect as of the effective filing date of the claimed invention
It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.
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Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
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What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):
“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”
This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).
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Cross-noting in patent applications refers to the process of recording and verifying information about prior applications, including U.S. and foreign applications, for which benefit or priority is claimed. This information is typically noted on the bibliographic data (bib-data) sheet of the application and is used to ensure accurate representation of priority claims on the front page of a printed patent.
According to MPEP 202, “The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.”
The function-way-result test is a key aspect of determining equivalence under the doctrine of equivalents. MPEP 2186 references this test as follows:
“[A]n analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.”
This test evaluates whether a substitute element in an accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed element in the patented invention.
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Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:
- Claiming Priority:
- Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
- Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
- Governed by 37 CFR 1.55 for foreign priority claims
- Claiming Benefit:
- Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
- Typically used for continuation, divisional, or continuation-in-part applications
- Governed by 37 CFR 1.78
The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”
What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?
The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):
“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”
Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.
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According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP 2109
The MPEP further clarifies:
“[T]here is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
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When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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According to 35 U.S.C. 113, drawings are required ‘where necessary for the understanding of the subject matter sought to be patented.’ Specifically:
- For applications filed on or after December 18, 2013 (except design applications), drawings are not required to receive a filing date, but may still be necessary to fully disclose the invention.
- For applications filed before December 18, 2013, drawings were required at filing if necessary for understanding the invention.
- Design applications must include drawings to receive a filing date.
The USPTO recommends including drawings in most cases, as they help ensure the requirements of 35 U.S.C. 113 are met for any claimed invention.
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The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
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Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):
“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”
This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
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While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:
- Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
- Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
- Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
- Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.
The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.
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The MPEP provides several examples of concepts and products that courts have identified as laws of nature or natural phenomena, which are not patentable. Some of these include:
- Isolated DNA
- Cloned farm animals
- Correlations between DNA variations and allele presence
- Metabolic correlations in the body
- Mathematical formulas (e.g., E=mc²)
- Electromagnetic signals
- Qualities of bacteria
- Single-stranded DNA fragments (primers)
- Chemical principles
- Cell-free fetal DNA in maternal blood
The MPEP Section 2106.04(b) states: “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter under Section 101. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity.”
These examples illustrate that naturally occurring phenomena and fundamental scientific principles are generally not eligible for patent protection.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s):
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.’”
The USPTO’s stance is based on the principle that claims should be self-contained and clearly define the invention without relying on external references. This approach ensures clarity and avoids potential ambiguity in interpreting the scope of the claims.
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No, sequence listings or tables should not be duplicated in both the drawings and the specification of a patent application. The MPEP 608.02(d) clearly states:
If an application filed under 35 U.S.C. 111 or under 35 U.S.C. 371 includes a sequence listing or a table, such a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification.
This requirement helps to avoid redundancy and potential inconsistencies between the drawings and the specification. Applicants should include sequence listings and tables in the appropriate sections of the specification only.
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35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(B): “excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(C): “excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, ‘were owned by the same person or subject to an obligation of assignment to the same person.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
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When referencing figures in the Brief Description of Drawings section of a patent application, you should:
- Refer to each figure by its number (e.g., Figure 1, Figure 2)
- Provide a brief explanation of what each figure represents
The MPEP 608.01(f) states:
The specification must contain or be amended to contain a brief description of the several views of the drawings.
For example:
Figure 1 is a perspective view of the invented device.
Figure 2 is a cross-sectional view of the device shown in Figure 1.
Keep the descriptions concise and avoid detailed explanations, which belong in the Detailed Description section.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
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Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP § 605 outlines these changes:
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
Key changes include:
- Assignees can now be listed as the applicant
- Persons with sufficient proprietary interest can file on behalf of the inventor
- The inventor is no longer required to be listed as the applicant
These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
Generally, the preamble limits the claim if:
- It recites essential structure or steps
- It’s necessary to give life, meaning, and vitality to the claim
- It’s used to define the scope of the claimed invention
As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”
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No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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No, modifications cannot be shown in broken lines on figures that show another form of the invention in solid lines. This is based on the principle established in Ex parte Badger, 1901 C.D. 195, 97 OG 1596 (Comm’r Pat. 1901). The MPEP section 608.02(f) states:
“Modifications may not be shown in broken lines on figures which show in solid lines another form of the invention.”
This rule ensures clarity and prevents confusion in patent drawings by keeping different forms of the invention visually distinct.
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The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:
- Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
- Electronic filing systems may be available 24/7, but the official filing date will be the next business day
MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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Yes, a patent can be reinstated after expiration due to non-payment of maintenance fees under certain conditions. The MPEP 2590 outlines the process for patent reinstatement:
“The patent may be reinstated if the delay in payment of the maintenance fee was unintentional.”
Key points about patent reinstatement:
- A petition for reinstatement must be filed within 24 months from the expiration date.
- The petition must include a statement that the delay was unintentional.
- All required maintenance fees and any applicable surcharges must be paid.
- The Director of the USPTO must determine that the delay was indeed unintentional.
It’s important to note that the reinstatement process is not automatic and requires a formal petition and fee payment.
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Showing modified forms of construction in the same figure is objectionable under 37 CFR 1.84(h)(5). The MPEP section 608.02(f) provides a form paragraph (6.22.05) that examiners can use to object to such drawings:
“The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view.”
This objection is made to ensure clarity in patent drawings and to prevent confusion between different forms or modifications of the invention. Applicants are required to submit corrected drawing sheets in compliance with 37 CFR 1.121(d) to address this objection.
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The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with this requirement.
According to the MPEP, “These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability.”
In essence, the utility requirement ensures that patented inventions are useful and serve a practical purpose.
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The “ready for patenting” requirement is the second prong of the Pfaff test for determining if an invention was “on sale” for the purposes of the on-sale bar. According to MPEP 2133.03(b), an invention is “ready for patenting” when either:
- The invention is reduced to practice; or
- The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.
This requirement ensures that the invention was sufficiently developed at the time of the offer for sale. It prevents inventors from claiming the on-sale bar doesn’t apply because the invention wasn’t complete, even if they were commercially exploiting the concept.
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
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The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02:
“If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well.”
By requiring disclosure of the best mode, the patent system prevents inventors from keeping their most valuable insights secret while still obtaining patent protection. This enhances the quality of information available to the public and other inventors, fostering further innovation in the field.
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Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch
. To access these records:
- Visit the USPTO Assignment Search website
- Enter the relevant patent or application number, assignee name, or other search criteria
- Review the search results for assignment information
This online database provides public access to assignment records, allowing for easy verification of patent ownership.
Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
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If an inventor has no middle name, their name should be formatted using only their given name (first name) and family name (last name). The MPEP 602.08(b) provides guidance on this:
If an inventor does not have a middle name or initial, then the field for middle name or initial should be left blank.
It’s important to note that the absence of a middle name should not be confused with the use of initials. If an inventor commonly uses initials in place of their full given name, this should be indicated appropriately on the application.
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How do I update my address for patent correspondence with the USPTO?
To update your address for patent correspondence with the USPTO:
- Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012.
- Use Form PTO/SB/122 for applications filed before September 16, 2012.
- Submit the form to the USPTO’s Mail Stop Post Issue division.
The MPEP states: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration (OPLA).” (MPEP 2805)
Ensure you follow the proper procedures to maintain accurate communication channels with the USPTO regarding your patent.
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A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
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For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
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No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
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The standard for enablement in prior art references is consistent across all types of prior art, regardless of their origin or format. As stated in MPEP 2121:
“The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.”
An enabling disclosure in a prior art reference must describe the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. However, it’s important to note that:
“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”
This means that a prior art reference can be considered enabling even if it doesn’t prove that the described invention actually works, as long as it provides enough information for a skilled artisan to practice the invention.
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Second Paragraph (2)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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