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 (1)
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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And Proportions (1)
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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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 200 – Types and Status of Application; Benefit and Priority (17)
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.
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.
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.
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 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 (29)
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, 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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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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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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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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MPEP 2106 – Patent Subject Matter Eligibility (1)
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 2106.04(A) – Abstract Ideas (1)
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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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 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 2111.03 – Transitional Phrases (1)
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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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 (2)
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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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 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 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 2144.05 – Obviousness Of Similar And Overlapping Ranges (1)
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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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 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 2163.07 – 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 2165.02 – Best Mode Requirement Compared To Enablement Requirement (1)
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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MPEP 2173.03 – Correspondence Between Specification And Claims (1)
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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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 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 (2)
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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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 2400 – Biotechnology (3)
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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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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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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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).
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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.
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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.
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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.
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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.
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MPEP 300 – Ownership and Assignment (13)
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.
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.
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 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.
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.
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.
MPEP 301-Ownership/Assignability of Patents and Applications (4)
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.
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 (2)
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 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.
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 (6)
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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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.
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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.
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 (4)
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.
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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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 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.
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 Law (112)
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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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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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.
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.
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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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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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.
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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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)
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.
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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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
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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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 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)
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.
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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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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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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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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 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.
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.
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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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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.
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 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.
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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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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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.
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 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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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.
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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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 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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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.
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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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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.
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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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.
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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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 Procedure (110)
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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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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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.
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For more information on design patents, visit: design patents.
For more information on Patent Application Process, visit: Patent Application Process.
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.
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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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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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.
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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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)
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.
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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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
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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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 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)
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.
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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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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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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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 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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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.
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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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.
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 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.
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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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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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.
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 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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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.
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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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 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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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.
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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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.
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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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.
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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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.